New Trial Proceedings
Section Frequency Chart
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| BM Patent |
Supplement: Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for
Summary:
The Leahy-Smith America Invents Act (AIA) establishes several new trial proceedings to be conducted by the Patent Trial and Appeal Board (Board) including inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings.
In separate rulemakings, the United States Patent and Trademark Office (Office or USPTO) is revising the rules of practice to implement these provisions of the AIA that provide for the trial proceedings before the Board.
The Office publishes in this notice a practice guide for the trial final rules to advise the public on the general framework of the regulations, including the structure and times for taking action in each of the new proceedings.
Effective Date:
This practice guide applies to inter partes review, post-grant review, and covered business method patent review proceedings commencing on or after September 16, 2012, as well as derivation proceedings commencing on or after March 16, 2013.
Executive Summary:
The patent trial regulations lay out a framework for conducting the proceedings aimed at streamlining and converging the issues for decision.
Background:
The Leahy-Smith America Invents Act establishes several new trial proceedings to be conducted by the Board including:
(1) Inter partes review (IPR);
(2) post-grant review (PGR);
(3) a transitional program for covered business method patents (CBM); and
(4) derivation proceedings.
Overview of requirements:
Proceedings begin with the filing of a petition to institute a trial.
The petition must be filed with the Board consistent with any time period required by statute and be accompanied by the evidence the petitioner seeks to rely upon.
For IPR, PGR, and CBM, the patent owner is afforded an opportunity to file a preliminary response.
The Board acting on behalf of the Director may institute a trial where the petitioner establishes that the standards for instituting the requested trial are met taking into account any preliminary response filed by the patent owner.
- Conversely, the Board may not authorize a trial where the information presented in the petition, taking into account any patent owner preliminary response, fails to meet the requisite standard for instituting the trial.
Where there are multiple matters in the Office involving the same patent, the Board may determine how the proceedings will proceed, including providing for a stay, transfer, consolidation, or termination of any such matter.
The AIA requires that the Board conduct AIA trials and that the Director prescribe regulations concerning the conduct of those trials.
- For example, for IPR, PGR, and CBM, the AIA mandates the promulgation of rules including motions to seal, procedures for filing supplemental information, standards and procedures for discovery, sanctions for improper use of the proceeding, entry of protective orders, and oral hearings.
- Additionally, the AIA mandates the promulgation of rules for IPR, PGR, and CBM concerning the submission of a patent owner response with supporting evidence and allowing the patent owner a motion to amend the patent.
A petitioner and a patent owner may terminate the proceeding with respect to the petitioner by filing a written agreement with the Board, unless the Board has already decided the merits of the proceeding before the request for termination is filed.
- If no petitioner remains in the proceeding, the Board may terminate the review or proceed to a final written decision.
For derivation proceedings, the parties may arbitrate issues in the proceeding, but nothing precludes the Office from determining the patentability of the claimed inventions involved in the proceeding.
Where a trial has been instituted and not dismissed, the Board will issue a final written decision with respect to the involved patent and/or applications.
For IPR, PGR, and CBM, the AIA requires that the Office consider the effect of the regulations on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete the proceedings.
In developing the general trial rules, as well as the specific rules for the individual proceedings, the Office has taken these considerations into account.
Further, the specific rules for the individual proceedings take into account the jurisdictional and timing requirements for the particular proceedings.
General Overview of Proceedings:
Generally, the proceedings begin with the filing of a petition that identifies all of the claims challenged and the grounds and supporting evidence on a claim-by-claim basis.
Within three months of notification of a filing date,the patent owner in an IPR, PGR, or CBM proceeding may file a preliminary response to the petition, including a simple statement that the patent owner elects not to respond to the petition.
The Board acting on behalf of the Director will determine whether to institute a trial within three months of the date the patent owner’s preliminary response was due or was filed, whichever is first.
In instituting a trial, the Board will narrow the issues for final decision by authorizing the trial to proceed only on the challenged claims for which the threshold standards for the proceeding have been met.
- Further, the Board willidentify, on a claim-by-claim basis, thegrounds on which the trial will proceed.
Any claim or issue not included in the authorization for review will not be part of the trial.
A party dissatisfied with the Board’s determination to institute a trial may request rehearing as to points believed to have been overlooked or misapprehended.
- The Board will enter a Scheduling Order(Appendix A) concurrent with the decision to institute a trial.
- The Scheduling Order will set due dates for the trial taking into account the complexity of the proceeding but ensuring that the trial is completed within one year of institution.
- For example, a Scheduling Order for an IPR or PGR might, consistent with §§ 42.120 and 42.220, provide a three month deadline for patent owner discovery and for filing a patent owner response and motion to amend.
- Once the patent owner’s response and motion to amend have been filed, the Scheduling Order might provide the petitioner with three months for discovery and for filing a petitioner’s reply to the response and the petitioner’s opposition to the amendment.
- The Scheduling Order might then provide the patent owner with one month for discovery and for filing a patent owner reply to petitioner’s opposition to a patent owner amendment.
Sequence of discovery:
Once instituted, absent special circumstances, discovery will proceed in a sequenced fashion.
- For example, the patent owner may begin deposing the petitioner’s declarants once the proceeding is instituted.
- After the patent owner has filed a patent owner response and any motion to amend the claims, the petitioner may depose the patent owner’s declarants.
- Similarly, after the petitioner has filed a reply to the patent owner’s response and an opposition to an amendment, the patent owner may depose the petitioner’s declarants and file a reply in support of its claim amendments.
Where the patent owner relies upon new declaration evidence in support of its amendments, the petitioner will be authorized to depose the declarants and submit observations on the deposition.
Once the time for taking discovery in the trial has ended, the parties will be authorized to file motions to exclude evidence believed to be inadmissible.
- Admissibility of evidence is generally governed by the Federal Rules of Evidence.
Sequence of filing responses and motions.
An initial conference call will be held about one month from the date of institution to discuss the motions that the parties intend to file and to determine if any adjustment needs to be made to the Scheduling Order.
The patent owner may file a patent owner’s response and/or a motion to amend the claims by the time set in the Scheduling Order.
The petitioner will then file a reply to the patent owner’s response and any opposition to the patent owner’s amendment.
Both parties will then be permitted an opportunity to file motions to exclude an opponent’s evidence believed to be inadmissible.
After all motions have been filed, the parties will be afforded an opportunity to have an oral argument at the Board.
