USPTO Requests Public Comment on America Invents Act PTAB Trial Proceedings | Practical Law

USPTO Requests Public Comment on America Invents Act PTAB Trial Proceedings | Practical Law

The US Patent and Trademark Office (USPTO) seeks public comment on all aspects of the Leahy-Smith America Invents Act (AIA) Patent Trial and Appeal Board (PTAB) trial proceedings, including the PTAB trial rules and trial practice guide.

USPTO Requests Public Comment on America Invents Act PTAB Trial Proceedings

Practical Law Legal Update 4-572-7065 (Approx. 3 pages)

USPTO Requests Public Comment on America Invents Act PTAB Trial Proceedings

by Practical Law Intellectual Property & Technology
Published on 26 Jun 2014 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) seeks public comment on all aspects of the Leahy-Smith America Invents Act (AIA) Patent Trial and Appeal Board (PTAB) trial proceedings, including the PTAB trial rules and trial practice guide.
On June 26, 2014, the USPTO released a broad request for public comment on the America Invents Act (AIA) Patent Trial and Appeal Board (PTAB) trial proceedings, including the PTAB trial rules and trial practice guide. The USPTO is seeking input based on the public's 18 months of experience with the new provisions (79 Fed. Reg. 36474-02 (June 27, 2014)). Although the USPTO seeks public comment on all aspects of PTAB trial proceedings, it is especially interested in public comment concerning the following issues, under which it has identified one or more specific questions:
  • Claim construction standard.
  • Motion to amend.
  • Patent owner preliminary response.
  • Obviousness.
  • Real party in interest.
  • Additional discovery.
  • Multiple proceedings.
  • Extension of one year period to issue final determination.
  • Oral hearing.
Comments must be sent by e-mail to [email protected], and must be received on or before September 16, 2014.
Update: Comments are now due by October 16, 2014. The USPTO published a notice extending the deadline from the original September 16, 2014 due date in view of stakeholder requests for additional time to submit comments on the new administrative trial proceedings.