Patents Post-Grant: Patent Trial & Appeal Board Rules Drafted by Major Bar Associations

Patents Post-Grant: Patent Trial & Appeal Board Rules Drafted by Major Bar Associations

ABA, AIPLA and IPO Suggest PTAB Model Rules to USPTO

Early last week, the major bar associations submitted comments to the USPTO on the current Group 2 Rule Making effort. As a reminder, Group 2 Rules are a second phase of USPTO rules designed to implement features of the America Invents Act (AIA). The Group 2 Rules include Inter Partes Review (IPR) & Post Grant Review (PGR).

Unlike other organizations that submitted commentary only, the ABA, AIPLA and IPO coordinated their efforts to prepare a set of model rules. Of course, the Office has been working on their own rule sets in parallel. As such, the submitted model rule set (here) is primarily provided to serve as a preliminary gauge of stakeholder expectations.

Some interesting suggestions in the model rules are as follows:

1. Practitioners IPR/PGR: The model rules suggest that lead counsel in any PGR/IPR proceeding must be a registered practitioner. Pro hac vice practice is contemplated, but is suggested to be "rarely granted." (See proposed rule 41.5)

2. Thresholds: The model rules argue that the standards to implement IPR & PGR should be the same as the differences in wording are not substantive. (see footnote 11 in overview). To date, the USPTO has been taking the position publicly that the standards are indeed different. The submission also points out that the AIA statutes require a denial of a petition that seeks to advance the same, or substantially the same arguments previously considered by the Office.

3. Timing: The model rules provide for automatic extensions to the 12 month statutory time frame for certain developments in IPR/PGR. For example, where prior use or public sale evidence is alleged in PGR (due to needed discovery) an automatic extension is suggested. (likewise for those proceedings in which a significant number of new claims are added, etc). A general theme of the suggested timing provisions is that Patentees should be accorded ample time relative to third parties since third parties have had significant time to prepare their petitions. Prior to petition determination, the model rules suggest a total duration of 6 months; 3 months from petition filing to preliminary response, then 3 months for the Office decision to issue. (this is consistent with my earlier estimate of this timing, chart here)

4. Discovery: The model rules allocate a Patentee discovery phase (months 1-6 after Order), the Requester discovery phase occurs thereafter (months 6-9).

5. Oral Hearing: 1 hour in total duration; 30 minutes per side.

The submission is impressive in scope and detail; it is certainly worth a read.

Details relating to specific timing an extension scenarios are not expected to be adopted by the Office. For example, many oral arguments in high profile inter partes patent reexamination disputes routinely extend beyond 60 minutes, and automatic extensions are not expected to be favored by the Office. As such, the Office is more likely to substitute their own judgement in arriving at these more detailed timing provisions of IPR/PGR. Nevertheless, the overall themes and concepts presented in the model rules will serve as a valuable benchmark to the agency as Group 2 rule making efforts finalize over the next 4-6 weeks.

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