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USPTO Final Rules for PTAB Proceedings
Practical Law Legal Update 2-520-8961 (Approx. 4 pages)
USPTO Final Rules for PTAB Proceedings
by PLC Intellectual Property & Technology
| Published on 14 Aug 2012 • USA (National/Federal) |
On August 14, 2012, the US Patent and Trademark Office (USPTO) published extensive final rules under the America Invents Act (AIA) concerning Patent Trial and Appeal Board (PTAB) Rules of Practice, inter partes review and post-grant review proceedings and the transitional program for covered business method patents.
On August 14, 2012, following public comment on earlier proposed rules, the USPTO issued a series of final rules to implement three administrative trial provisions of the AIA, namely:
- Inter partes review.
- Post-grant review.
- The transitional program for covered business method patents.
The rules encompass the following areas:
- Rules setting out general procedures common to the three types of administrative trials before the Patent Trial and Appeal Board (PTAB) (see General Procedures).
- Rules setting out specific procedures for the three types of trials (see Specific Procedures).
- A rule setting out the definitions of the terms "covered business method patent" and "technological invention" that the PTAB will use in conducting transitional post-grant review of covered business method patents (see Definitions for Transitional Covered Business Method Patent Review Proceedings).
The USPTO also issued a related practice guide setting out the general framework for the rules, including the structure and times for taking action in each proceeding (see Practice Guide).
The final rule for inter partes review will apply to any patent issued before, on or after September 16, 2012. The rule for post-grant review will apply to patents issued from applications subject to the first-inventor-to-file system, which becomes effective on March 16, 2013.
General Procedures
The final rules set out the general procedures common to the three types of proceedings before the PTAB, including:
- The evidentiary standards, procedure and default times for conducting trial proceedings.
- The fees for requesting reviews.
- The procedure for petition and motion practice.
- The page limits for petitions, motions, oppositions and replies.
- The standards and procedures for discovery of relevant evidence.
- The sanctions for abuse of discovery, abuse of process or any other improper use of the proceeding.
- The procedure for requesting oral hearings.
- The procedure for requesting rehearing of decisions and filing appeals.
- The procedure for requesting joinder.
- The procedure to make file records available to the public that include the procedures for:
- motions to seal;
- protective orders for confidential information; and
- requests to treat settlement as business confidential information.
Specific Procedures
The final rules set out the specifics for the three different proceedings, including:
- The requirements for a petition to institute the particular type of review.
- The standards for showing sufficient grounds to institute the review.
- The standards for instituting the particular review.
- The procedures for conducting the particular review that permits a patent owner response, a submission of written comments, and an oral hearing.
- The standards and procedures for discovery and for the patent owner to move to amend the patent.
- The time periods for completing the review.
Definitions for Transitional Post-grant Review of Covered Business Method Patents
The final rules set out the definitions of the terms:
- Covered business method patent.
- Technological invention.
These definitions will be used by the USPTO in conducting transitional post-grant review of covered business method patents.
Practice Guide
The USPTO also issued a practice guide for the PTAB 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.
Updates to PLC Intellectual Property & Technology AIA Resources
PLC Intellectual Property & Technology's AIA resources, including Practice Note, PTAB Post-patent Proceedings Practice Rules, will be updated to reflect these rules.