New Trial Proceedings Introduction
Summary:
The United States Patent and Trademark Office (Office or USPTO) is revising the rules of practice to implement the provisions of the Leahy- Smith America Invents Act (‘‘AIA’’) that create the new inter partes review proceeding, post-grant review proceeding, and transitional post-grant review proceeding for covered business method patents, to be conducted before the Patent Trial and Appeal Board (Board).
Dates:
These provisions of the AIA will take effect on September 16, 2012, one year after the date of enactment.
Applicability Dates:
The changes for inter partes review proceedings apply to any patent issued before, on, or after September 16, 2012.
The changes for post-grant review proceedings generally apply to patents issuing from applications subject to first-inventor-to-file provisions of the AIA.
- In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interferences commenced before September 16, 2012, to be dismissed without prejudice to the filing of a petition for post-grant review.
The changes for transitional program for covered business method patents apply to any covered business method patent issued before, on, or after September 16, 2012.
Supplemental Information:Executive Summary:
The patent trial regulations lay out a framework for conducting the proceedings aimed at streamlining and converging the issues for decision.
Summary of Major Provisions:
The following points are covered for inter partes review:
- (1) The requirements for a petition to institute an inter partes review of a patent;
- (2) the standards for showing of sufficient grounds to institute an inter partes review;
- (3) the standards for instituting an inter partes review;
- (4) the procedures for conducting an inter partes review that permits a patent owner response, a submission of written comments, and an oral hearing;
- (5) the standards and procedures for discovery and for the patent owner to move to amend the patent; and
- (6) the time periods for completing the review (subpart B of 37 CFR part 42).
The following points are covered for post-grant review:
- (1) The requirements for a petition to institute a post-grant review of a patent;
- (2) the standards for showing of sufficient grounds to institute a post-grant review;
- (3) the standards for instituting a post-grant review;
- (4) the procedures for conducting a post-grant review that permits a patent owner response, a submission of written comments, and an oral hearing;
- (5) the standards and procedures for discovery and for the patent owner to move to amend the patent; and
- (6) the time periods for completing the review (subpart C of 37 CFR part 42).
The following points are covered for transitional post-grant review of covered business method patents:
- (1) The requirements for a petition to institute a post-grant review of a covered business method patent;
- (2) the standards for showing of sufficient grounds to institute a post-grant review of a covered business method patent;
- (3) the standards for instituting a post-grant review of a covered business method patent;
- (4) the procedures for conducting a post-grant review that permits a patent owner response, a submission of written comments, and an oral hearing;
- (5) the standards and procedures for discovery and for the patent owner to move to amend the patent; and
- (6) the time periods for completing the review (subpart D of 37 CFR part 42).
