PTO Proposes Rules of Practice for Patent Trials before Board

USPTO Proposes Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions

Washington – The United States Patent and Trademark Office (USPTO) has proposed a consolidated set of rules related to trial practice before the Patent Trial and Appeal Board. The proposed rules implement the provisions of the Leahy-Smith America Invents Act relating to inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings.

“Since the enactment of the Leahy-Smith America Invents Act, we have worked in concert with our stakeholder community to launch transformative initiatives to improve the way Americans innovate, and the way the USPTO handles those innovations,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “These new rules will offer an alternative way to challenge the patentability of an invention apart from district court litigation.”

The proposed rules for inter partes review, post grant review, the transitional program for covered business methods, and derivation proceedings were designed to balance the interests of patentees and challengers, offer flexibility to the parties, and narrow the issues as time progresses.  Additionally, consistent with the requirement in the America Invents Act that inter partes review, post grant review, and the transitional program for covered business methods be complete in one year from initiation, the proposed rules were structured to enable the Patent Trial and Appeal Board to resolve proceedings quickly.  As a result, patent owners will have greater certainty in the scope of their patent rights sooner.

To accompany the proposed rules, the Office has also published a Trial Practice Guide.  The Guide advises the public on the general framework of the proposed regulations, including the structure and times for taking action in each of the new proceedings.

Earlier this week, the USPTO released the proposed rules and Trial Practice Guide for public viewing at www.uspto.gov/americainventsact. Today the agency published the proposed rules and Trial Practice Guide officially in the Federal Register, opening a 60-day public comment period.  The public is encouraged to give feedback to the agency about the proposed rules and Trial Practice Guide during this time.

Editorial Note:

Here are links to information on the USPTO Website relative to this announcement.

Proposed Rule of Practice for Trials before the PTAB (77 Fed. Reg. 6879, Feb. 9, 2012)

Proposed Trial Practice Guide (77 Fed. Reg. 6868, Feb. 9, 2012)

Proposed Rules for Post Grant Review

Proposed Rules for Inter Partes Review

Proposed Rules for the Transitional Program for Covered Business Methods

Proposed Rules for the Definition of Technological Invention

Proposed Rules for Derivation