Patents Post-Grant: USPTO Post Grant Rule Proposals to Force Piecemeal Practice?

Severe Page Limit Restrictions Likely to Force Parallel Filings

The page limit restrictions proposed by the USPTO for the new post grant proceedings of the America Invents Act (AIA) are quite severe. The currently proposed rules set a maximum 50 page limit for requests to initiate Inter Partes Review (IPR), and 70 pages for Post Grant Review (PGR). The page limits may be waived upon successful petition for additional pages, however, the Office has explained that such cases would be "exceptional."

As if the page limits were not enough, the proposal also requires double spacing and a 14 point font (§42.24). These guidelines, taken together with the need to explain lengthy patent claims (up to 20 claims per request) and compare complex figures of the prior art, combine to present significant disincentives to the public. Simply stated, the "use it or lose it" nature of the statutory estoppel provisions of IPR and PGR are inconsistent with such restrictions. For example, to present more than a single proposed rejection in an IPR request directed to 10 claims or more would almost certainly exceed the 50 page limit.

As pointed out last week, the mean page count for an inter partespatent reexamination (IPX) is several hundred pages. IPR was formulated by Congress to replace IPX. As such, the Office's administrative restrictions may very well frustrate the intent of Congress that these new post grant proceedings serve as a meaningful alternative to patent litigation (in which expert reports on validity and related pleadings may span thousands of pages).

An additional side effect of the proposed limits may be that filers present their proposed rejections across several requests filed in parallel.

For example, take the case of a patent having 5 independent claims and 15 dependent claims. It may be wiser from an estoppel perspective to present the five independent claims in a single request. By segregating the claims, additional page space is freed up to present multiplechallenges directed to the 5 base claims. The remaining 15 claims can be included in one or more separate requests.

Moreover, while the Office has provided an escalating filing fee for attacking more than 20 claims of a subject patent, there does not seem to be a provision to expand the page count in correspondence to the increased fee. Thus, a filer seeking to attack 30 claims of a patent, can file a single 50 page request in IPR seeking to address all claims for $34K, or file two 50 page requests that divide the claims (100 pages total) for a fee of $54k. It seems whether filing a request directed to 20 claims or 1000, the Office will still require a 50 page request in IPR. Aside from being non-sensical in application, the Agency would be hard pressed to rationalize the practical effect of this proposal as being consistent with the Paperwork Reduction Act.

Unlike inter partes patent reexamination, which precludes multiple filings after an initial Order under 35 U.S.C. § 317(a), no such prohibition exists for IPR or PGR. Of course, a $27K filing fee would be associated with each additional filing. Yet, for significant disputes the trade off in estoppel protection may be well worth the investment. Indeed, in typical troll suits it is quite common for defendants to cooperate on a reexamination filing strategy by filing separate requests; the cost of the filings being spread among the parties.

While the proposed rules provide broad powers to the PTAB to consolidate, and even stay a related Board proceeding (§§42.122/42.222) there would not seem to be cause to stay multiple proceedings related to different claims, but instead, consolidate them. That is to say if two requests are pending, one directed to claims 1-10 of a patent, the other directed to claim 11-20, there would not seem to be any basis to stay one in favor of the other. On the other hand if there were two requests, both of which are directed to claims 1-20, there is arguably cause (waste of office resources) to stay one in favor of the other. Thus, parties subject to multi-defendant disputes would be wise to coordinate their filing strategy to target individual claims per request instead of separate requests directed to the same claims.

At the time of this writing the major bar associations are preparing comments directed to the proposed rules. Based on the preliminary comments I have seen, the organizations will point out that the escalating fee structure is a recognition on the part of the USPTO that  proceedings involving more challenged claims will require additional work. For that reason, the USPTO proposes a fee for a proceeding directed to 51 claims be double the fee charged for a proceeding involving 20 claims.  The page limit rule, aside from being too low a base value (50 pages for IPR and 70 for PGR), should recognize the same realities, and should provide for increased numbers of pages in complex proceedings with numerous claims.  If the petitioner pays fees for review of additional claims, especially at the proposed levels, then extra pages should be available.

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