By Stephen B. Maebius, Courtenay Brinckerhoff, Kristel Schorr and Benjamin A. Berkowitz
On February 7, 2012, the USPTO released seven proposed rules packages to implement the new trial proceedings that the Patent Trial and Appeal Board (Board) will conduct under the Leahy-Smith America Invents Act (AIA). With this latest batch of proposed rules, the USPTO now has issued proposed rules for the substantive changes that take effect on September 16, 2012. The new trial proceedings (particularly inter partes review and post-grant review) offer competitors new opportunities to challenge granted patents within the USPTO. While this article highlights specific aspects of the proposed rules, patent holders and competitors also will want to consider strategic issues, such as those we have addressed in previous publications (http://tinyurl.com/7qfzlvm). Public comments on the proposed rules are due according to the schedule below, which also lists the effective dates of the various AIA provisions.
Proposed Rules Packages With AIA Effective Date of September 16, 2012
Proposed Rules Package With AIA Effective Date of March 16, 2013
For more information on the proposed rules relating to preissuance submissions, miscellaneous post patent provisions, changes to the inventor's oath/declaration, and supplemental examination, please see patent reform-related articles on Foley'sPharmaPatentsBlog (http://www.pharmapatentsblog.com/patent-reform/) and additional information available online at Foley.com/patent reform.
The following is a detailed summary of the USPTO's proposed rules for the new trial proceedings.
Practice Guide for Proposed Trial Rules
The USPTO's Practice Guide is intended to advise the public on the general framework of the proposed rules, including the structure and times for taking action, as well as standard forms and orders that the Board intends to use in the proceedings, including:
Rules of Practice for Trials Before the Patent Trial and Appeal Board (Subpart A)
General procedures common to all four types of trial proceedings will be codified at 37 CFR 42, subpart A. Notable provisions include:
Inter Partes Review (Subpart B)
Rules specific to inter partes review would be codified at 37 CFR 42, subpart B. The effective date is September 16, 2012. The comment deadline is April 10, 2012.
The most significant proposed rules for inter partes review include:
Post-Grant Review (Subpart C)
Rules specific to post-grant review would be codified at 37 CFR 42, subpart C. The effective date is September 16, 2012. The comment deadline is April 10, 2012.
Most of the proposed rules governing post-grant review mirror those governinginter partes review. Notable provisions in post-grant review include:
Transitional Program for Covered Business Method Patents (Subpart D)
Rules specific to the transitional program for covered business method patents would be codified at 37 CFR 42, subpart D. This subpart expressly incorporates most of the rules governing post-grant review. Notable differences unique to covered business method patents include:
Derivation Proceedings (Subpart E)
Rules specific to derivations would be codified at 37 CFR 42, subpart E. Notable proposals include:
Stakeholder Input on the Proposed Rules
The USPTO must have final rules in place before September 16, 2012. Given this relatively short timeframe, it is likely that many of the rules will be adopted substantially as proposed. Nevertheless, the USPTO has shown a willingness to modify proposed rules based on public comments. Thus, companies should take advantage of this unique opportunity to shape the rules that will govern the significant changes to U.S. patent practice enacted by the AIA. Companies may want to focus on the most onerous or substantively significant provisions, such as those relating to filing fees, deadlines, estoppel, discovery, sanctions, duty of disclosure, confidentiality, and content requirements for petitions and expert testimony.
Foley attorneys will continue to study the proposed rules and other aspects of the USPTO's AIA implementation process, and will share updates and insight on Foley's patent reform Web page (Foley.com/patentreform) and PharmaPatentsBlog.
Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and colleagues. If you have any questions about this alert or would like to discuss the topic further, please contact your Foley attorney or the following:
Stephen B. MaebiusChair, IP DepartmentWashington, D.C.email@example.com
Courtenay BrinckerhoffVice Chair, Chemical, Biotechnology & Pharmaceutical PracticeWashington, D.C.firstname.lastname@example.org
Kristel SchorrPartnerWashington, D.C.email@example.com
Benjamin A. BerkowitzSenior CounselWashington, D.C.firstname.lastname@example.org
© 2012 Foley & Lardner LLP
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