Patents Post-Grant: USPTO Buzz — Rule Packages and PTAB Roll Out

Patents Post-Grant: USPTO Buzz — Rule Packages and PTAB Roll Out

PTAB Rule Packages to Publish on August 14th

The final rule packages for the new post grant patent proceedings of the Patent Trial & Appeal Board (PTAB) were expected to issue last week but were obviously delayed.  The USPTO informed the Intellectual Property Section of the ABA (at the ABA annual meeting last weekend) that these final rule packages will publish on August 14th. (available in the Federal Register reading room on the 13th). The delay is a result of the time needed for publishing agencies to review such a significant submission. For example, last Friday the USPTO was asked to adjust minor formatting, section headings/numbering, etc to the original submission made in July.

While the agency was tight lipped as to changes in the final rules during their presentations over the weekend, reading between the lines of some of the commentary, the following changes seem likely:

-a revision to the pro hac vice proposal
-a splitting of the proposed filing fee. The first payment would be due at filing, the second, due upon grant of the petition
-modification to the patentee estopell provision
-further refinement of the proposed duty of patentees to submit "inconsistent information"

In other PTAB news, the new domain will go live shortly. will include a link to the electronic portal for filing the new post grant patent trial proceedings. Testing and further details on the portal may be released before August 14th. Also, in addition to the judges already resident in the new Detroit office, the PTAB will be hiring  judges for the other satellite offices (Denver, Dallas, and Palo Alto). These job announcements are expected to publish on in the coming weeks.

Finally, the rule package entitled "Changes to Implement Post Patent Provisions of the Leahy-Smith America Invents Act" prints today. Attached is a copy of these rules as first published in the reading room yesterday. Major changes to the previous proposal include: dropping the requirement that anonymous ex parte reexamination filers reveal their identity to the agency, and modifying the proposed "office estoppel" rules to allow for ongoing ex parte proceedings to continue independent of IPR/PGR estoppel. I will discuss these changes in more detail in the coming days.

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