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Post-Grant Review

Post-Grant Review - Rules

Section 42.200: Procedure; pendency.

MPEP SECTION SUMMARY Section 42.200 sets forth policy considerations for post-grant review proceedings.

Section 42.200(a) provides that a post-grant review is a trial and subject to the rules set forth in subpart A of title 42, Code of Federal Regulations.

Section 42.200(b) provides that a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification in which it appears.

Section 42.200(c) provides a one-year timeframe for administering the proceeding after institution, with up to a six-month extension for good cause.

Section 42.200(d) provides that interferences commenced within one year of enactment of the AIA shall proceed under part 41 of 37 CFR except as the Chief Administrative Patent Judge may otherwise order in the interests-of justice.

• The expectation is that dismissal will be rarely, if ever, ordered.
  • Hence, any case where such an order arises would be exceptional and should be handled as its circumstances require.

 

Section 42.201: Who may petition for a post-grant review.

MPEP SECTION SUMMARY Section 42.201 provides who may file a petition for post-grant review.

Section 42.201(a) provides that a person who is not the patent owner may file a petition to institute a post-grant review, unless the petitioner or real party-in-interest had already filed a civil action challenging the validity of a claim of the patent.

Section 42.201(b) provides that a petition may not be filed where the petitioner, the petitioner’s real party-in interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.

 

Section 42.202: Time for filing.

MPEP SECTION SUMMARY Section 42.202 sets forth the timeliness requirement for filing a post-grant review petition.

Section 42.202(a) provides that a petition for a post-grant review of a patent must be filed no later than the date that is nine months after the date of the grant of a patent or of the issuance of a reissue patent.

• Section 42.202(a) also provides that a petition may not request a post-grant review for a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued unless the petition is filed not later than the date that is nine months after the date of the grant of the original patent.

Section 42.202(b) provides that the Director may limit the number of post-grant reviews that may be instituted during each of the first four one-year periods after post-grant review takes effect.

• The Office, however, does not expect to limit the number of petitions at this time.

 

Section 42.203: Post-grant review fee.

MPEP SECTION SUMMARY Section 42.203 provides that a fee must accompany a petition for post-grant review and that no filing date will be accorded until full payment is received.

 

Section 42.204: Content of petition.

MPEP SECTION SUMMARY Section 42.204 provides for the content of petitions to institute a post-grant review.

Section 42.204(a) provides that a petition must demonstrate that the petitioner has standing.

• To establish standing, a petitioner, at a minimum, must certify that the patent is available for post-grant review and that the petitioner is not barred or estopped from requesting a post-grant review challenging the patent claims.
• This requirement is to ensure that a party has standing to file the post-grant review and would help prevent spuriously instituted post-grant reviews.
• Facially improper standing will be a basis for denying the petition without proceeding to the merits of the petition.

Section 42.204(b) requires that the petition identify the precise relief requested for the claims challenged.

• Specifically, the rule requires that the petition identify each claim being challenged, the specific grounds on which each claim is challenged, how the claims are to be construed, how the claims as construed are unpatentable, why the claims as construed are unpatentable under the identified grounds, and the exhibit numbers of the evidence relied upon with a citation to the portion of the evidence that is relied upon to support the challenge.
• The rule provides an efficient means for identifying the legal and factual basis satisfying the threshold for instituting a proceeding and provides the patent owner with a minimum level of notice as to the basis for the challenge to the claims.

Section 42.204(c) provides that a petitioner seeking to correct clerical or typographical mistakes in a petition could file a procedural motion to correct the mistakes.

• The rule also provides that the grant of such a motion would not alter the filing date of the petition.

 

Section 42.205: Service of petition.

MPEP SECTION SUMMARY Section 42.205 provides petition and exhibit service requirements in addition to the service requirements of § 42.6.

Section 42.205(a) requires the petitioner to serve the patent owner at the correspondence address of record for the patent, and permits service at any other address known to the petitioner as likely to effect service as well.

• Once a patent has issued, communications between the Office and the patent owner often suffer. (patentee’s failure to maintain correspondence address contributed to failure to pay maintenance fee and therefore expiration of the patent).
• While the rule requires service at the correspondence address of record in the patent, the petitioner will already be in communication with the patent owner, in many cases, at a better service address than the official correspondence address.

Section 42.205(b), as adopted in this final rule, provides that upon agreement of the parties, service may be made electronically, and service may be made by EXPRESS MAIL® or by means at least as fast and reliable as EXPRESS MAIL®.

• Personal service is not required.

 

Section 42.206: Filing date.

MPEP SECTION SUMMARY Section 42.206 provides for the filing date requirements of a post-grant review petition.

Section 42.206(a) sets forth the requirements for a complete petition.

35 U.S.C. 322 states that a petition may only be considered when the petition identifies all the real parties in interest, when a copy of the petition is provided to the patent owner or the owner’s representative, and when the petition is accompanied by the fee established by the Director.

• Consistent with the statute, the rule requires that a complete petition be filed along with the fee and that it be served upon the patent owner.

Section 42.206(b) provides one month to correct defective requests to institute a post-grant review, unless the statutory deadline in which to file a petition for post-grant review has expired.

• In determining whether to grant a filing date, the Board will review a petition for procedural compliance.
• Where a procedural defect is noted, e.g., failure to state the claims being challenged, the Board will notify the petitioner that the petition was incomplete and identify any non-compliance issues.

 

Section 42.207: Preliminary response to petition.

MPEP SECTION SUMMARY Section 42.207 covers the preliminary response to a petition.

Section 42.207(a) provides that the patent owner may file a preliminary response to the petition.

• The rule is consistent with 35 U.S.C. 323, which provides for such a response.

Section 42.207(b) provides that the due date for the preliminary response to petition is no later than three months from the date of the notice that the request to institute a post-grant review has been granted a filing date.

• Within three months from the filing of the patent owner preliminary response, or three months from the date such a response was due, the Board will determine whether to institute the review.
• A patent owner seeking a shortened period for the determination may wish to file a preliminary response well before the date the response is due, or file a paper stating that no preliminary response will be filed.
• No adverse inference will be drawn where a patent owner elects not to file a response or elects to waive the response.

Section 42.207(c) provides that the patent owner preliminary response may not present new testimony evidence, for example, expert witness testimony on patentability.

• 35 U.S.C. 323 provides that a patent owner preliminary response set forth reasons why no post-grant review should be instituted.
• In contrast, 35 U.S.C. 326(a)(8) provides for a patent owner response after institution and requires the presentation, through affidavits or declarations, of any additional factual evidence and expert opinions on which the patent owner relies in support of the response.
• The difference in statutory language demonstrates that 35 U.S.C. 323 does not permit the presentation of evidence as a matter of right in the form of testimony in support of a patent owner preliminary response, and the proposed rule reflects this distinction.
• In certain instances, however, a patent owner may be granted additional discovery before filing its preliminary response and may submit any testimonial evidence obtained through the discovery.
• For example, additional discovery may be authorized where the patent owner raises sufficient concerns regarding the petitioner’s certification of standing.
• Although 35 U.S.C. 324 does not require that a patent owner preliminary response be considered, the Board expects to consider such responses in all but exceptional cases.

Section 42.207(d) provides that the patent owner preliminary response cannot include any amendment.

Section 42.207(e) provides that the patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a), disclaiming one or more claims in the patent, and no post-grant review will be instituted to review disclaimed claims.

 

Instituting Post-Grant Review

Section 42.208: Institution of post-grant review.

MPEP SECTION SUMMARY Section 42.208 provides for the institution of a post-grant review. 35 U.S.C. 324(a), as amended, states that the Director may not authorize a post-grant review to be instituted, unless the Director determines that the information in the petition, if such information is not rebutted, demonstrates that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. Alternatively, the Director may institute a post-grant review by showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications. In considering whether to authorize the review, the Board may take into account its ability to complete the proceeding timely. 35 U.S.C. 326(b).

Section 42.208(a) provides that the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.

• Specifically, in instituting the review, the Board may authorize the review to proceed on the challenged claims for which the threshold requirements for the proceeding have been met.
• The Board may identify which of the grounds the review will proceed upon on a claim-by-claim basis.
• Any claim or issue not included in the authorization for review would not be part of the post-grant review.
• The Office intends to publish a notice of the institution of a post-grant review in the Official Gazette.

Section 42.208(b) provides that the Board, prior to institution of a review, may deny some or all grounds for unpatentability on some or all of the challenged claims.

Section 42.208(c) provides that the institution may be based on a more likely than not standard and that standard is consistent with the requirements of 35 U.S.C. 324(a).

Section 42.208(d) provides that a determination under § 42.208(c) may be satisfied by a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.

• The expectation is that this ground for a post-grant review would be used sparingly.

 

After Institution of Post-Grant Review

Section 42.220: Patent owner response.

MPEP SECTION SUMMARY Section 42.220 sets forth the procedure in which the patent owner may file a patent owner response.

Section 42.220(a) provides for a patent owner response and is consistent with the requirements of 35 U.S.C. 326(a)(8).

Section 42.220(b) provides that if no time for filing a patent owner response to a petition is provided in a Board order, the default time for filing the response is three months from the date the post-grant review is instituted.

• The Board’s experience with patent owner responses is that three months provides a sufficient amount of time to respond in a typical case, especially as the patent owner would already have been provided three months to file a patent owner preliminary response prior to institution.
• Additionally, the time period for response is consistent with the requirement that the trial be conducted such that the Board renders a final decision within one year of the institution of the review.

 

Section 42.221: Amendment of the patent.

MPEP SECTION SUMMARY Section 42.221 provides standards and procedures for a patent owner to file motions to amend the patent.

Section 42.221(a) makes it clear that the first motion to amend need not be authorized by the Board.

• If the motion complies with the timing and procedural requirements, the motion would be entered.
• Additional motions to amend would require prior Board authorization.
• All motions to amend, even if entered, will not result automatically in entry of the proposed amendment into the patent.
• The requirement to consult the Board reflects the Board’s need to regulate the substitution of claims and the amendment of the patent to control unnecessary proliferation of issues and abuse of the system.
• The proposed rule aids in the efficient administration of the Office and the timely completion of the proceeding.
• Section 42.221(a) also provides that a motion to amend the claims may be denied where the amendment does not respond to the ground of unpatentability involved in the trial or seeks to enlarge the scope of the claims or introduce new matter.
• Section 42.221(a) further provides that a reasonable number of substitute claims is presumed to be one substitute claim per challenged claim which may be rebutted by a demonstration of need.
• The rule aids the efficient administration of the Office and the timely completion of the review under 35 U.S.C. 326(b) and also is consistent with 35 U.S.C. 326(d)(3) which prohibits enlarging the scope of the claims or introducing new matter.

Section 42.221(b) provides that a motion to amend the claims must include a claim listing, show the changes clearly, and set forth:

• (1) The support in the original disclosure of the patent for each claim that is added or amended, and
• (2) the support in an earlier filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.

Under § 42.221(c), a patent owner may request the filing of more than one motion to amend its claims during the course of the proceeding.

• Additional motions to amend may be permitted upon a demonstration of good cause by the patent owner or a joint request of the petitioner and the patent owner to materially advance a settlement.
• In considering whether good cause is shown, the Board will take into account how the filing of such motions would impact the timely completion of the proceeding and the additional burden placed on the petitioner.
• Specifically, belated motions to amend may cause the integrity and efficiency of the review to suffer as the petitioner may be required to devote significant time and resources on claims that are of constantly changing scope.
• Furthermore, due to time constraints, motions to amend late in the process may not provide a petitioner a full and fair opportunity to respond to the newly presented subject matter.
• In determining whether to authorize such an additional motion to amend, the Board will consider whether a petitioner has submitted supplemental information after the time period set for filing a motion to amend.
• Similarly, a motion to amend may be permitted upon a joint request of the petitioner and the patent owner to advance settlement where the motion does not jeopardize the ability of the Office to complete the proceeding timely.

 

Section 42.222: Multiple proceedings and Joinder.

MPEP SECTION SUMMARY Section 42.222 is consistent with the requirements of 35 U.S.C. 325(d) regarding multiple proceedings involving the subject patent. When there is a question of a stay concerning a matter for which a statutory time period is running in one of the proceedings, where the stay would impact the ability of the Office to meet the statutory deadline, it is expected that the Director would be consulted prior to issuance of a stay, given that the stay would impact the ability of the Office to meet the statutory deadline for completing the post-grant review. For example, it is expected that the Board would consult the Director prior to the issuance of a stay in an ex parte reexamination proceeding where the three-month statutory time period under 35 U.S.C. 303 is running. Under § 42.222(b), a patent owner or petitioner may request a joinder, but such a request must be filed no later than one month after institution.

 

Section 42.223: Filing of supplemental information.

MPEP SECTION SUMMARY Section 42.223 provides for the filing of supplemental information. 35 U.S.C. 326(a)(3) provides that the Director shall promulgate regulations establishing procedures for filing supplemental information after the petition is filed. 35 U.S.C. 324(a) provides that the institution of a post-grant review is based upon the information filed in the petition under 35 U.S.C. 321 and any response filed under 35 U.S.C. 323. As the institution of the post-grant review is not based upon supplemental information, the rule provides that motions identifying supplemental information be filed after the institution of the post-grant review.

 

Section 42.224: Discovery.

MPEP SECTION SUMMARY Section 42.224 provides that additional discovery in a post-grant review is limited to evidence directly related to factual assertions advanced by a party to the proceeding and that the standard for additional discovery is good cause. While an interests-of-justice standard will be employed in granting additional discovery in inter partes reviews and derivation proceedings, new subpart C will provide that a good cause standard is employed in post-grant reviews, and by consequence, in covered business method patent reviews. Good cause and interests-of-justice are closely related standards, but on balance, the interests-of-justice standard is a slightly higher standard than good cause. While a good cause standard requires a party to show a specific factual reason to justify the needed discovery, interests-of-justice would mean that the Board would look at all relevant factors. The interests-of-justice standard covers considerably more than the good cause standard, and in using such a standard the Board will attempt to consider whether the additional discovery is necessary in light of ‘‘the totality of the relevant circumstances.’

 

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