USPTO Proposes Changes to its Rules of Practice to Implement Certain Post-Patent Provisions of the AIA | Practical Law

USPTO Proposes Changes to its Rules of Practice to Implement Certain Post-Patent Provisions of the AIA | Practical Law

The USPTO proposes new rules of patent practice to implement certain post-patent provisions of the Leahy-Smith America Invents Act (AIA).

USPTO Proposes Changes to its Rules of Practice to Implement Certain Post-Patent Provisions of the AIA

by PLC Intellectual Property & Technology
Published on 09 Jan 2012 • USA (National/Federal)
The USPTO proposes new rules of patent practice to implement certain post-patent provisions of the Leahy-Smith America Invents Act (AIA).
On January 5, 2012, the USPTO issued a notice of proposed rulemaking announcing that it is proposing to change Sections 1.501, 1.510, 1.515 and 1.552 of Title 37 of the Code of Federal Regulations (CFR) to implement certain post-patent provisions of the Leahy-Smith America Invents Act (AIA). The proposed rule changes address:
  • The ability of any person to submit in the file of an issued patent written statements made by a patent owner before a federal court or the USPTO regarding the scope of any claim in the relevant patent.
  • The estoppel provisions of the AIA that estop a third party requester from filing a request for ex parte reexamination in certain instances where the third party requester petitioned for inter partes or post-grant review.
More specifically, the proposed rules permit any person to submit a patent owner statement filed in a proceeding before a Federal court or the USPTO where the patent owner took a position on the scope of a patent claim. The statement must be:
  • Accompanied by:
    • other documents, pleadings or evidence from the proceeding in which the statement was made and that address the statement; and
    • an explanation as to how the information is pertinent and how to apply it.
  • Served on the patent owner.
Both the statement and the accompanying information must be redacted to exclude information subject to a protective order.
In addition, the proposed rules clarify that these statements and the accompanying information may only be used to determine the proper meaning of a claim in an instituted:
  • Ex parte reexamination.
  • Inter partes reexamination.
  • Post-grant review.
The notice of proposed rulemaking also proposes new rules relating to ex parte reexaminations that require:
  • A certification in any request for ex parte reexamination that the statutory estoppel provisions of inter partes review and post-grant review do not bar the third party from requesting ex parte reexamination.
  • A statement identifying the real party in interest in an ex parte reexamination.
The USPTO also proposes changing various sections of the CFR to:
  • Rename the Board of Patent Appeals and Interferences as the Patent Trial and Appeal Board.
  • Add specific references to trial proceedings before the Patent Trial and Appeal Board.
  • Add specific references to derivation proceedings.
The USPTO is accepting comments on each of the proposed rules until March 5, 2012.
For more information on the AIA, see Practice Note, Leahy-Smith America Invents Act: Overview.