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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