Earlier this summer the United States Patent and Trademark Office published a Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board. This request for comments pertains to the new administrative trial proceedings ushered in by the America Invents Act (AIA), which President Obama signed into law on September 11, 2011. The administrative trial proceedings at the USPTO did not go into effect immediately, but rather went into effect on September 16, 2012, the first anniversary of the signing of the AIA.
The administrative trial proceedings created by the AIA are: (1) Inter partes review; (2) post-grant review; (3) covered business method patents review; and (4) derivation proceedings. To bring these new proceedings into being, the USPTO issued a number of final rules and a trial practice guide in August and September of 2012. It is now time for the USPTO to take a step back and take account of these new proceedings, aided by public input. This is not an unexpected occurrence. Many will recall that during the rule making phase the USPTO held roundtable discussions in a number of cities across the country. During this timeframe the USPTO committed to revisiting the rules and practice guide once the Board and public had operated under the rules and practice guide for some unspecified period of time and had gained experience with the new administrative trial proceedings. With nearly two years of practical experience with these new proceedings, the time has now come for the USPTO to revisit and quite possibly revise the rules.
The USPTO began the process of revisiting the AIA administrative trial proceeding rules and trial practice guide by engaging in a nationwide listening tour. The USPTO conducted a series of eight roundtables in April and May of 2014, in Alexandria, New York City, Chicago, Detroit, Silicon Valley, Seattle, Dallas, and Denver, to share and collect information concerning the AIA administrative trial proceedings.
The USPTO is now taking the next steps and is seeking public comment on all aspects of the new administrative trial proceedings, including the administrative trial proceeding rules and trial practice guide. Written comments are due in just over one month, and must be received on or before September 16, 2014. Comments hould be sent via e-mail to TrialsRFC2014@ uspto.gov. Electronic comments submitted in plain text are preferred.
The following are issues on which the USPTO has specifically asked the public comment on because these issues were most frequently raised during the roundtables. The 17th and final request from the USPTO is labeled “General” and acts as a catch-all for whatever ideas and commentary the public wishes to provide. In this catch-all the USPTO asks for comment on what changes can and should be made in AIA trial proceedings?
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Claim Construction Standard
1. Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?
Motion To Amend
2. What modifications, if any, should be made to the Board’s practice regarding motions to amend?
Patent Owner Preliminary Response
3. Should new testimonial evidence be permitted in a Patent Owner Preliminary Response? If new testimonial evidence is permitted, how can the Board meet the statutory deadline to determine whether to institute a proceeding while ensuring fair treatment of all parties?
4. Under what circumstances should the Board permit discovery of evidence of non-obviousness held by the petitioner (for example, evidence of commercial success for the petitioner’s product)? What limits should be placed on such discovery to ensure that the trial is completed by the statutory deadline?
Real Party in Interest
5. Should a patent owner be able to raise a challenge regarding a real party in interest at any time during a trial?
6. Are the factors enumerated in the Board’s decision in Garmin v. Cuozzo, IPR2012–00001, appropriate to consider in deciding whether to grant a request for additional discovery? What additional factors, if any, should be considered?
7. How should multiple proceedings before the USPTO involving the same patent be coordinated? Multiple proceedings before the USPTO include, for example: (i) two or more separate AIA trials; (ii) an AIA trial and a reexamination proceeding; or (iii) an AIA trial and a reissue proceeding.
8. What factors should be considered in deciding whether to stay, transfer, consolidate, or terminate an additional proceeding involving the same patent after a petition for AIA trial has been filed?
9. Under what circumstances, if any, should a copending reexamination proceeding or reissue proceeding be stayed in favor of an AIA trial? If a stay is entered, under what circumstances should the stay be lifted?
10. Under what circumstances, if any, should an AIA trial be stayed in favor of a copending reexamination proceeding or reissue proceeding? If a stay is entered, under what circumstances should the stay be lifted?
11. Under what circumstances, if any, should a cop ending reexamination proceeding or reissue proceeding be consolidated with an AIA trial?
12. How should consolidated proceedings be handled before the USPTO? Consolidated proceedings include, for example: (i) consolidated AIA trials; (ii) an AIA trial consolidated with a reexamination proceeding; or (iii) an AIA trial consolidated with a reissue proceeding.
13. Under what circumstances, if any, should a petition for an AIA trial be rejected because the same or substantially the same prior art or arguments were already presented to the USPTO in a different petition for an AIA trial, in a reexamination proceeding, or in a reissue proceeding?
Extension of One-Year Period To Issue Final Determination
14. What circumstances should constitute a finding of good cause to extend the one-year period for the Board to issue a final determination in an AIA trial?
15. Under what circumstances, if any, should live testimony be permitted at the oral hearing?
16. What changes, if any, should be made to the format of the oral hearing?
A version of this article published earlier at the PLI Patent Practice Center.