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| Patent Cooperation Treaty (PCT) Information |
Patent Cooperation Treaty (PCT) Information
For information concerning PCT member countries, see the notice
appearing in the Official Gazette at 1369 O.G. 5, on August 2, 2011.
For information on subject matter under Rule 39 that a particular
International Searching Authority will not search, see Annex D of the PCT
Applicants' Guide.
European Patent Office as Searching and Examining Authority
The European Patent Office (EPO) may act as the International Searching
Authority (ISA) for an international application filed with the United
States Receiving Office or the International Bureau (IB) as Receiving
Office where at least one of the applicants is either a national or
resident of the United States of America. However, the EPO is no longer
a competent ISA, within the meaning of PCT Article 16(3), for
international applications filed by U.S. residents or nationals on or
after March 1, 2002, in the USPTO or IB as a Receiving Office, and where
the application contains one or more claims directed to the field of
business methods. For the definition of what the EPO considers to be
precluded subject matter in the field of business methods, applicants
should see the "Notice from the President of the European Patent
Office", dated November 26, 2001, and which was published as Annex A in
the "Notice Concerning EPO Competence to Act as PCT Authority" in the
Official Gazette at 1255 O.G. 878, on February 19, 2002.
The European Patent Office may act as the International Preliminary
Examining Authority (IPEA) for an international application filed in the
United States Receiving Office or the International Bureau as Receiving
Office where at least one of the applicants is either a national or
resident of the United States of America, provided that the European
Patent Office acted as the International Searching Authority. However,
the EPO is no longer a competent IPEA, within the meaning of PCT Article
32(3), for international applications filed by U.S. residents or nationals
in the USPTO or IB as a Receiving Office where the corresponding demand is
filed with the EPO on or after March 1, 2002, and where the application
contains one or more claims directed to the field of business methods.
The search fee of the European Patent Office was decreased, effective
January 1, 2012, and was announced in the Official Gazette at 1373 O.G.
177, on December 27, 2011.
Korean Intellectual Property Office as Searching and Examining Authority
For use of the Korean Intellectual Property Office as an International
Searching Authority and International Preliminary Examining Authority for
international applications filed in the United States Receiving Office,
see the notice appearing in the Official Gazette at 1302 O.G. 1261 on
January 17, 2006.
The search fee of the Korean Intellectual Property Office was decreased,
effective January 1, 2012, and was announced in the Official Gazette at
1373 O.G. 177, on December 27, 2011.
Australian Patent Office as Searching and Examining Authority
The Australian Patent Office (IP Australia) may act as the International
Searching Authority (ISA) for an international application filed with the
United States Receiving Office or the International Bureau (IB) as
Receiving Office where at least one of the applicants is either a national
or resident of the United States of America. However, IP Australia is not a
competent ISA, within the meaning of PCT Artical 16(3), for international
applications filed by U.S. residents or nationals in the USPTO or IB as a
Receiving Office, and where the application contains one or more claims
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 55 |
directed to the field of business methods or mechanical inventions.
IP Australia may act as the International Preliminary Examining
Authority (IPEA) for an international application filed in the United
States Receiving Office or the International Bureau as Receiving Office
where at least one of the applicants is either a national or resident of
the United States of America, provided that IP Australia acted as the
International Searching Authority. However, IP Australia is not a competent
IPEA, within the meaning of PCT Article 32(3), for international
applications filed by U.S. residents or nationals in the USPTO or IB as a
Receiving Office where the corresponding demand is filed with IP Australia
and where the application contains one or more claims directed to the
fields of business methods or mechanical engineering or analogous fields of
technology as defined by specified areas of the International Patent
Classification System, as indicated in Annex A to the agreement between the
USPTO and IP Australia. See the notice appearing in the Official Gazette
at 1337 O.G. 261 on December 23, 2008.
For use of IP Australia as an International Searching Authority and
International Preliminary Examining Authority for international
applications filed in the United States Receiving Office, see the notice
appearing in the Official Gazette at 1337 O.G. 265 on December 23, 2008.
The search fee of IP Australia was increased, effective January 1, 2012,
and was announced in the Official Gazette at 1373 O.G. 177, on December 27,
2011.
Fees
The transmittal fee for the USPTO was changed to include a basic portion
and a non-electronic filing fee portion, effective November 15, 2011, and
was announced in the Federal Register on November 15, 2011. Search fees for
the USPTO were changed, effective January 12, 2009, and were announced in
the Federal Register on November 12, 2008. The fee for filing a request for
the restoration of the right of priority was established, effective
November 9, 2007, and was announced in the Federal Register on September 10,
2007.
International filing fees were increased, effective January 1, 2012,
and were announced in the Official Gazette at 1373 O.G. 177, on December
27, 2011.
The schedule of PCT fees (in U.S. dollars), as of January 1, 2012, is as
follows:
International Application (PCT Chapter I) fees:
Transmittal fee
Basic Portion $240.00
Non-electronic filing fee portion for international
applications (other than plant applications) filed
on or after 15 November 2011 other than by the
Office electronic filing system (other than a
small entity) $400.00
Non-electronic filing fee portion for international
applications (other than plant applications) filed
on or after 15 November 2011 other than by the
Office electronic filing system (small entity) $200.00
Search fee
U.S. Patent and Trademark Office (USPTO) as
International Searching Authority (ISA)
- Search fee $2,080.00
- Supplemental search fee, per additional
invention (payable only upon invitation) $2,080.00
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 56 |
European Patent Office as ISA $2,370.00
Korean Intellectual Property Office as ISA
- for international applications filed in English $1,101.00
IP Australia as ISA $1,833.00
International fees
International filing fee $1,453.00
International filing fee-filed in paper
with PCT EASY zip file or
electronically without PCT EASY zip file $1,344.00
International filing fee-filed
electronically with PCT EASY zip files $1,494.00
Supplemental fee for each page over 30 $1,234.00
Restoration of Priority
Filing a request for the restoration of the
right of priority under § 1.452 $1,410.00
International Application (PCT Chapter II) fees associated
with filing a Demand for Preliminary Examination:
Handling fee $219.00
Handling fee-90% reduction, if applicants meet criteria
specified at:
http://www.wipo.int/pct/en/fees/fee_reduction.pdf $21.90
Preliminary Examination Fee
USPTO as International Preliminary
Examining Authority (IPEA)
- USPTO was ISA in PCT Chapter I $600.00
- USPTO was not ISA in PCT Chapter I $750.00
- Additional preliminary examination fee,
per additional invention
(payable only upon invitation) $600.00
U.S. National Stage fees (for international applications entering
the U.S. national phase under 35 U.S.C. 371) can be found on the USPTO's
Web site (www.uspto.gov).
January 9, 2012 ANDREW H. HIRSHFELD
Associate Commissioner for
Patent Examination Policy
United States Patent and Trademark Office
| Notice of Maintenance Fees Payable |
Notice of Maintenance Fees Payable
Title 37 Code of Federal Regulations (CFR), Section 1.362(d) provides
that maintenance fees may be paid without surcharge for the six-month
period beginning 3, 7, and 11 years after the date of issue of patents
based on applications filed on or after Dec. 12, 1980. An additional
six-month grace period is provided by 35 U.S.C. 41(b) and 37 CFR 1.362(e)
for payment of the maintenance fee with the surcharge set forth in 37 CFR
1.20(h), as amended effective Dec. 16, 1991. If the maintenance fee is
not paid in the patent requiring such payment the patent will expire on
the 4th, 8th, or 12th anniversary of the grant.
Attention is drawn to the patents that were issued on March 3, 2009
for which maintenance fees due at 3 years and six months may now be paid
The patents have patent numbers within the following ranges:
Utility Patents 7,496,968 through 7,500,272
Reissue Patents based on the above identified patents.
Attention is drawn to the patents that were issued on March 1, 2005
for which maintenance fees due at 7 years and six months may now be paid
The patents have patent numbers within the following ranges:
Utility Patents 6,859,938 through 6,862,742
Reissue Patents based on the above identified patents.
Attention is drawn to the patents that were issued on February 27, 2001
for which maintenance fees due at 11 years and six months may now be paid.
The patents have patent numbers within the following ranges:
Utility Patents 6,192,519 through 6,195,797
Reissue Patents based on the above identified patents.
No maintenance fees are required for design or plant patents.
Payments of maintenance fees in patents may be submitted electronically
over the Internet at www.uspto.gov. Click on the "Site Index" link at the
top of the homepage (www.uspto.gov), and then scroll down and click on the
"Maintenance Fees" link for more information.
Payments of maintenance fees in patents not submitted electronically
over the Internet should be mailed to "United States Patent and Trademark
Office, P.O. Box 979070, St. Louis, MO 63197-9000".
Correspondence related to maintenance fees other than payments of
maintenance fees in patents is not to be mailed to P.O. Box 979070,
St. Louis, MO 63197-9000, but must be mailed to "Mail Stop M
Correspondence, Director of the U.S. Patent and Trademark Office, P.O.
Box 1450, Alexandria, VA 22313-1450".
Patent owners must establish small entity status according to 37 CFR
1.27 if they have not done so and if they wish to pay the small entity
amount.
The current amounts of the maintenance fees due at 3 years and six
months, 7 years and six months, and 11 years and six months are set forth
in the most recently amended provisions in 37 CFR 1.20(e)-(g). To obtain
the current maintenance fee amounts, please call the USPTO Contact Center
at (800)-786-9199 or see the current USPTO fee schedule posted on the USPTO
Internet web site. At the top of the USPTO homepage at www.uspto.gov, click
on the "Site Index" link and then scroll down and click on the "Fees,
USPTO" link to find the current USPTO fee schedule.
| Notice of Expiration of Patents Due to Failure to Pay Maintenance Fee |
Notice of Expiration of Patents
Due to Failure to Pay Maintenance Fee
35 U.S.C. 41 and 37 CFR 1.362(g) provide that if the required
maintenance fee and any applicable surcharge are not paid in a patent
requiring such payment, the patent will expire at the end of the 4th, 8th
or 12th anniversary of the grant of the patent depending on the first
maintenance fee which was not paid.
According to the records of the Office, the patents listed below have
expired due to failure to pay the required maintenance fee and any
applicable surcharge.
PATENTS WHICH EXPIRED ON January 25, 2012
DUE TO FAILURE TO PAY MAINTENANCE FEES
Patent Application Issue
Number Number Date
6,016,574 09/228,765 01/25/00
6,016,587 09/000,399 01/25/00
6,016,591 09/300,352 01/25/00
6,016,601 08/653,780 01/25/00
6,016,602 08/797,619 01/25/00
6,016,619 09/050,234 01/25/00
6,016,622 09/193,449 01/25/00
6,016,626 08/992,776 01/25/00
6,016,628 08/913,289 01/25/00
6,016,633 08/999,276 01/25/00
6,016,637 09/094,530 01/25/00
6,016,638 09/173,693 01/25/00
6,016,639 09/033,542 01/25/00
6,016,649 09/303,857 01/25/00
6,016,650 09/157,243 01/25/00
6,016,656 09/117,633 01/25/00
6,016,662 08/867,432 01/25/00
6,016,675 09/188,292 01/25/00
6,016,686 09/042,601 01/25/00
6,016,689 08/752,460 01/25/00
6,016,692 08/967,681 01/25/00
6,016,698 09/163,828 01/25/00
6,016,699 09/163,829 01/25/00
6,016,704 09/042,679 01/25/00
6,016,705 09/087,645 01/25/00
6,016,708 09/090,347 01/25/00
6,016,718 09/001,014 01/25/00
6,016,719 08/828,802 01/25/00
6,016,730 08/917,462 01/25/00
6,016,733 09/006,907 01/25/00
6,016,740 08/977,997 01/25/00
6,016,749 08/711,984 01/25/00
6,016,750 09/085,554 01/25/00
6,016,760 08/673,079 01/25/00
6,016,763 09/000,189 01/25/00
6,016,768 09/363,830 01/25/00
6,016,775 09/151,237 01/25/00
6,016,779 08/921,255 01/25/00
6,016,786 09/117,340 01/25/00
6,016,794 09/014,153 01/25/00
6,016,802 08/932,039 01/25/00
6,016,810 09/060,950 01/25/00
6,016,811 09/144,725 01/25/00
6,016,814 09/175,525 01/25/00
6,016,824 09/109,065 01/25/00
6,016,849 08/875,130 01/25/00
6,016,867 09/103,770 01/25/00
| March 13, 2012 |
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6,016,868 09/103,590 01/25/00
6,016,881 08/992,338 01/25/00
6,016,884 08/949,652 01/25/00
6,016,892 08/905,246 01/25/00
6,016,895 09/067,518 01/25/00
6,016,899 08/989,974 01/25/00
6,016,901 08/790,748 01/25/00
6,016,914 09/266,405 01/25/00
6,016,915 09/304,394 01/25/00
6,016,924 09/028,949 01/25/00
6,016,925 09/133,487 01/25/00
6,016,930 09/015,173 01/25/00
6,016,936 09/099,830 01/25/00
6,016,939 09/023,044 01/25/00
6,016,950 08/983,494 01/25/00
6,016,951 09/141,930 01/25/00
6,016,953 08/911,448 01/25/00
6,016,962 08/988,885 01/25/00
6,016,975 09/070,744 01/25/00
6,016,984 09/183,259 01/25/00
6,016,996 08/655,751 01/25/00
6,016,997 08/958,927 01/25/00
6,017,013 08/928,199 01/25/00
6,017,014 09/028,104 01/25/00
6,017,034 08/970,807 01/25/00
6,017,036 09/207,726 01/25/00
6,017,048 08/811,138 01/25/00
6,017,049 08/958,339 01/25/00
6,017,058 09/152,435 01/25/00
6,017,061 08/953,409 01/25/00
6,017,067 08/998,813 01/25/00
6,017,068 09/014,672 01/25/00
6,017,070 09/046,038 01/25/00
6,017,072 09/059,626 01/25/00
6,017,082 09/190,753 01/25/00
6,017,087 09/135,908 01/25/00
6,017,095 08/926,024 01/25/00
6,017,096 09/027,814 01/25/00
6,017,097 08/999,048 01/25/00
6,017,099 08/981,670 01/25/00
6,017,101 08/752,951 01/25/00
6,017,103 09/109,208 01/25/00
6,017,117 08/550,698 01/25/00
6,017,120 09/073,801 01/25/00
6,017,122 09/038,413 01/25/00
6,017,125 08/928,243 01/25/00
6,017,131 09/174,353 01/25/00
6,017,148 09/311,235 01/25/00
6,017,150 08/988,823 01/25/00
6,017,160 08/773,582 01/25/00
6,017,164 09/153,584 01/25/00
6,017,167 09/149,525 01/25/00
6,017,173 08/969,276 01/25/00
6,017,178 08/928,302 01/25/00
6,017,195 08/924,050 01/25/00
6,017,196 09/010,984 01/25/00
6,017,202 08/989,038 01/25/00
6,017,206 08/822,287 01/25/00
6,017,210 08/720,289 01/25/00
6,017,212 09/228,394 01/25/00
6,017,217 09/072,953 01/25/00
6,017,221 08/866,040 01/25/00
6,017,222 09/191,229 01/25/00
6,017,223 08/882,910 01/25/00
6,017,224 09/154,862 01/25/00
6,017,225 09/145,637 01/25/00
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
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6,017,239 08/965,504 01/25/00
6,017,242 08/864,177 01/25/00
6,017,249 09/205,363 01/25/00
6,017,254 09/050,625 01/25/00
6,017,258 08/963,858 01/25/00
6,017,281 09/072,935 01/25/00
6,017,288 09/189,647 01/25/00
6,017,296 09/347,851 01/25/00
6,017,297 09/131,869 01/25/00
6,017,305 08/593,299 01/25/00
6,017,312 09/017,583 01/25/00
6,017,314 09/059,156 01/25/00
6,017,326 08/006,081 01/25/00
6,017,328 08/695,596 01/25/00
6,017,334 08/725,404 01/25/00
6,017,344 09/261,977 01/25/00
6,017,351 09/192,849 01/25/00
6,017,359 08/877,255 01/25/00
6,017,360 09/195,502 01/25/00
6,017,368 09/102,538 01/25/00
6,017,369 09/197,711 01/25/00
6,017,375 09/017,068 01/25/00
6,017,376 08/952,063 01/25/00
6,017,386 09/235,476 01/25/00
6,017,391 09/271,420 01/25/00
6,017,400 09/079,964 01/25/00
6,017,402 08/919,721 01/25/00
6,017,407 08/955,585 01/25/00
6,017,410 07/931,330 01/25/00
6,017,415 08/924,360 01/25/00
6,017,419 08/931,854 01/25/00
6,017,438 08/938,555 01/25/00
6,017,446 09/131,145 01/25/00
6,017,454 08/839,680 01/25/00
6,017,455 08/945,862 01/25/00
6,017,458 09/140,743 01/25/00
6,017,464 09/207,797 01/25/00
6,017,468 08/909,629 01/25/00
6,017,473 09/135,544 01/25/00
6,017,477 08/686,208 01/25/00
6,017,479 09/196,576 01/25/00
6,017,481 09/019,097 01/25/00
6,017,484 08/786,784 01/25/00
6,017,488 09/075,247 01/25/00
6,017,495 09/078,825 01/25/00
6,017,496 08/709,435 01/25/00
6,017,500 09/174,024 01/25/00
6,017,504 09/116,732 01/25/00
6,017,509 08/092,355 01/25/00
6,017,512 08/931,095 01/25/00
6,017,513 08/987,436 01/25/00
6,017,514 09/268,543 01/25/00
6,017,516 08/962,099 01/25/00
6,017,518 08/944,452 01/25/00
6,017,521 08/951,419 01/25/00
6,017,528 09/257,025 01/25/00
6,017,531 08/867,331 01/25/00
6,017,533 08/637,437 01/25/00
6,017,535 08/325,426 01/25/00
6,017,536 08/360,107 01/25/00
6,017,543 08/467,302 01/25/00
6,017,556 08/931,392 01/25/00
6,017,558 08/967,214 01/25/00
6,017,559 08/960,937 01/25/00
6,017,572 09/203,977 01/25/00
6,017,577 08/382,478 01/25/00
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
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6,017,583 08/913,809 01/25/00
6,017,589 09/167,871 01/25/00
6,017,590 08/760,757 01/25/00
6,017,592 09/151,337 01/25/00
6,017,600 09/093,643 01/25/00
6,017,603 08/981,576 01/25/00
6,017,604 08/696,570 01/25/00
6,017,605 09/066,824 01/25/00
6,017,608 08/970,688 01/25/00
6,017,615 08/918,064 01/25/00
6,017,619 08/937,969 01/25/00
6,017,620 09/055,961 01/25/00
6,017,621 08/996,612 01/25/00
6,017,628 08/776,216 01/25/00
6,017,633 08/887,188 01/25/00
6,017,641 09/038,988 01/25/00
6,017,649 09/022,741 01/25/00
6,017,653 08/641,500 01/25/00
6,017,654 08/906,024 01/25/00
6,017,658 07/882,226 01/25/00
6,017,660 09/094,184 01/25/00
6,017,663 09/277,735 01/25/00
6,017,664 09/181,188 01/25/00
6,017,665 09/030,925 01/25/00
6,017,673 09/053,015 01/25/00
6,017,674 08/786,640 01/25/00
6,017,681 08/554,499 01/25/00
6,017,684 08/982,517 01/25/00
6,017,688 09/014,193 01/25/00
6,017,695 08/040,741 01/25/00
6,017,701 08/779,355 01/25/00
6,017,706 08/852,355 01/25/00
6,017,711 09/137,686 01/25/00
6,017,713 09/266,950 01/25/00
6,017,717 09/069,484 01/25/00
6,017,721 08/789,096 01/25/00
6,017,725 09/136,775 01/25/00
6,017,727 08/760,534 01/25/00
6,017,728 08/978,454 01/25/00
6,017,731 08/989,251 01/25/00
6,017,735 09/012,126 01/25/00
6,017,737 08/419,810 01/25/00
6,017,738 08/761,862 01/25/00
6,017,740 08/836,986 01/25/00
6,017,741 09/257,542 01/25/00
6,017,742 09/009,541 01/25/00
6,017,747 08/984,417 01/25/00
6,017,753 09/179,794 01/25/00
6,017,754 08/518,835 01/25/00
6,017,757 08/804,136 01/25/00
6,017,762 08/115,753 01/25/00
6,017,772 09/260,633 01/25/00
6,017,777 08/954,051 01/25/00
6,017,781 08/755,734 01/25/00
6,017,785 08/698,675 01/25/00
6,017,789 08/881,561 01/25/00
6,017,792 08/650,581 01/25/00
6,017,809 08/988,221 01/25/00
6,017,812 09/119,974 01/25/00
6,017,816 08/805,295 01/25/00
6,017,829 08/829,851 01/25/00
6,017,835 08/147,759 01/25/00
6,017,837 08/657,203 01/25/00
6,017,839 09/020,993 01/25/00
6,017,841 08/846,667 01/25/00
6,017,856 09/205,183 01/25/00
| March 13, 2012 |
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6,017,881 08/756,164 01/25/00
6,017,885 09/080,120 01/25/00
6,017,889 09/219,704 01/25/00
6,017,892 08/880,255 01/25/00
6,017,897 08/896,500 01/25/00
6,017,903 08/884,479 01/25/00
6,017,906 09/072,182 01/25/00
6,017,908 09/079,838 01/25/00
6,017,910 08/451,726 01/25/00
6,017,914 08/923,072 01/25/00
6,017,924 09/373,460 01/25/00
6,017,925 09/006,626 01/25/00
6,017,934 09/009,616 01/25/00
6,017,939 09/142,408 01/25/00
6,017,942 08/742,018 01/25/00
6,017,949 08/904,708 01/25/00
6,017,952 08/737,851 01/25/00
6,017,954 07/940,123 01/25/00
6,017,959 08/981,404 01/25/00
6,017,960 09/076,355 01/25/00
6,017,963 08/557,279 01/25/00
6,017,965 08/763,480 01/25/00
6,017,972 09/322,589 01/25/00
6,017,973 08/857,639 01/25/00
6,017,974 09/053,519 01/25/00
6,017,983 09/015,163 01/25/00
6,017,989 08/831,148 01/25/00
6,017,990 08/825,171 01/25/00
6,017,992 09/107,505 01/25/00
6,018,009 08/771,889 01/25/00
6,018,010 08/635,302 01/25/00
6,018,016 08/999,552 01/25/00
6,018,019 08/256,839 01/25/00
6,018,021 08/326,119 01/25/00
6,018,022 08/467,976 01/25/00
6,018,026 08/980,400 01/25/00
6,018,036 08/463,876 01/25/00
6,018,038 09/225,244 01/25/00
6,018,042 08/914,961 01/25/00
6,018,044 09/219,943 01/25/00
6,018,048 08/989,157 01/25/00
6,018,054 08/979,751 01/25/00
6,018,055 08/892,707 01/25/00
6,018,058 08/860,481 01/25/00
6,018,064 09/016,210 01/25/00
6,018,066 09/266,837 01/25/00
6,018,068 09/000,102 01/25/00
6,018,073 08/991,963 01/25/00
6,018,082 08/933,986 01/25/00
6,018,083 09/283,450 01/25/00
6,018,089 08/987,554 01/25/00
6,018,094 08/939,983 01/25/00
6,018,096 08/055,105 01/25/00
6,018,098 08/973,449 01/25/00
6,018,106 09/116,879 01/25/00
6,018,117 09/090,517 01/25/00
6,018,119 08/973,073 01/25/00
6,018,120 08/888,617 01/25/00
6,018,123 08/774,011 01/25/00
6,018,124 09/007,631 01/25/00
6,018,127 09/003,707 01/25/00
6,018,129 09/084,940 01/25/00
6,018,136 09/315,338 01/25/00
6,018,139 09/010,065 01/25/00
6,018,140 09/028,255 01/25/00
6,018,141 08/635,140 01/25/00
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 63 |
6,018,142 09/033,612 01/25/00
6,018,153 09/000,187 01/25/00
6,018,159 08/987,818 01/25/00
6,018,161 09/127,454 01/25/00
6,018,167 08/998,713 01/25/00
6,018,170 08/885,463 01/25/00
6,018,173 08/892,928 01/25/00
6,018,185 08/861,218 01/25/00
6,018,189 09/052,156 01/25/00
6,018,190 09/028,954 01/25/00
6,018,191 09/035,104 01/25/00
6,018,192 09/126,576 01/25/00
6,018,193 09/343,161 01/25/00
6,018,202 09/029,781 01/25/00
6,018,204 09/007,047 01/25/00
6,018,210 08/920,902 01/25/00
6,018,213 09/196,610 01/25/00
6,018,234 08/931,730 01/25/00
6,018,246 08/953,356 01/25/00
6,018,248 08/845,943 01/25/00
6,018,261 08/801,665 01/25/00
6,018,267 09/037,233 01/25/00
6,018,279 08/952,387 01/25/00
6,018,282 08/965,229 01/25/00
6,018,291 09/090,613 01/25/00
6,018,292 09/342,881 01/25/00
6,018,295 09/135,462 01/25/00
6,018,297 08/737,761 01/25/00
6,018,321 08/851,182 01/25/00
6,018,329 09/018,656 01/25/00
6,018,334 08/803,445 01/25/00
6,018,336 08/800,030 01/25/00
6,018,337 08/873,577 01/25/00
6,018,355 08/808,860 01/25/00
6,018,356 09/012,140 01/25/00
6,018,368 08/999,073 01/25/00
6,018,370 08/848,387 01/25/00
6,018,388 09/252,311 01/25/00
6,018,393 08/899,721 01/25/00
6,018,396 08/930,531 01/25/00
6,018,407 08/859,205 01/25/00
6,018,409 09/088,485 01/25/00
6,018,413 09/064,325 01/25/00
6,018,422 09/165,789 01/25/00
6,018,428 09/107,179 01/25/00
6,018,431 09/293,622 01/25/00
6,018,434 08/782,183 01/25/00
6,018,435 08/782,312 01/25/00
6,018,439 09/104,875 01/25/00
6,018,446 09/072,727 01/25/00
6,018,457 08/969,805 01/25/00
6,018,462 09/104,824 01/25/00
6,018,467 09/362,465 01/25/00
6,018,469 08/994,402 01/25/00
6,018,470 09/165,673 01/25/00
6,018,475 09/173,326 01/25/00
6,018,476 08/972,369 01/25/00
6,018,477 09/169,037 01/25/00
6,018,481 09/174,534 01/25/00
6,018,483 09/209,199 01/25/00
6,018,484 09/183,591 01/25/00
6,018,486 09/093,210 01/25/00
6,018,488 09/104,626 01/25/00
6,018,500 09/252,833 01/25/00
6,018,504 09/077,658 01/25/00
6,018,566 08/957,541 01/25/00
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 64 |
6,018,568 08/721,785 01/25/00
6,018,580 08/946,668 01/25/00
6,018,582 08/779,257 01/25/00
6,018,587 08/886,293 01/25/00
6,018,589 08/437,379 01/25/00
6,018,595 08/890,206 01/25/00
6,018,596 08/816,154 01/25/00
6,018,599 08/371,443 01/25/00
6,018,611 08/495,025 01/25/00
6,018,613 08/245,954 01/25/00
6,018,614 09/303,111 01/25/00
6,018,618 08/296,975 01/25/00
6,018,630 08/441,697 01/25/00
6,018,632 09/168,612 01/25/00
6,018,641 08/838,773 01/25/00
6,018,647 08/966,623 01/25/00
6,018,649 08/916,779 01/25/00
6,018,678 08/545,236 01/25/00
6,018,693 08/931,726 01/25/00
6,018,701 08/921,788 01/25/00
6,018,702 09/102,294 01/25/00
6,018,713 09/057,560 01/25/00
6,018,729 08/932,439 01/25/00
6,018,755 08/748,854 01/25/00
6,018,812 07/600,204 01/25/00
6,018,818 08/943,307 01/25/00
PATENTS WHICH EXPIRED ON January 20, 2012
DUE TO FAILURE TO PAY MAINTENANCE FEES
Patent Application Issue
Number Number Date
6,678,894 10/142,591 01/20/04
6,678,898 09/905,763 01/20/04
6,678,903 10/338,446 01/20/04
6,678,909 10/218,832 01/20/04
6,678,910 10/073,325 01/20/04
6,678,912 09/763,284 01/20/04
6,678,915 10/044,086 01/20/04
6,678,917 10/058,365 01/20/04
6,678,920 10/178,175 01/20/04
6,678,931 10/261,841 01/20/04
6,678,933 10/301,954 01/20/04
6,678,934 09/679,220 01/20/04
6,678,940 09/885,657 01/20/04
6,678,941 09/603,970 01/20/04
6,678,947 09/763,460 01/20/04
6,678,948 09/530,536 01/20/04
6,678,958 10/137,206 01/20/04
6,678,965 10/426,344 01/20/04
6,678,971 10/061,787 01/20/04
6,678,974 10/330,396 01/20/04
6,678,977 10/348,303 01/20/04
6,678,980 09/949,019 01/20/04
6,678,984 09/657,899 01/20/04
6,678,989 10/342,635 01/20/04
6,678,992 10/116,937 01/20/04
6,678,997 09/509,705 01/20/04
6,679,009 10/075,214 01/20/04
6,679,013 10/004,112 01/20/04
6,679,014 10/274,183 01/20/04
6,679,022 10/088,031 01/20/04
6,679,023 10/095,764 01/20/04
6,679,024 10/082,887 01/20/04
6,679,026 09/717,025 01/20/04
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 65 |
6,679,027 09/725,977 01/20/04
6,679,029 09/957,904 01/20/04
6,679,036 09/977,181 01/20/04
6,679,043 10/008,611 01/20/04
6,679,044 10/015,547 01/20/04
6,679,049 10/054,644 01/20/04
6,679,052 10/201,719 01/20/04
6,679,053 10/173,223 01/20/04
6,679,054 10/136,693 01/20/04
6,679,075 10/164,312 01/20/04
6,679,081 10/292,071 01/20/04
6,679,083 10/211,137 01/20/04
6,679,089 10/052,211 01/20/04
6,679,091 10/153,190 01/20/04
6,679,097 10/148,198 01/20/04
6,679,100 10/264,068 01/20/04
6,679,101 10/009,905 01/20/04
6,679,102 10/200,841 01/20/04
6,679,107 08/515,964 01/20/04
6,679,118 10/019,126 01/20/04
6,679,126 09/902,238 01/20/04
6,679,127 09/935,977 01/20/04
6,679,130 09/779,148 01/20/04
6,679,131 09/966,585 01/20/04
6,679,133 09/857,450 01/20/04
6,679,134 10/379,797 01/20/04
6,679,136 10/012,403 01/20/04
6,679,138 10/241,930 01/20/04
6,679,150 10/352,732 01/20/04
6,679,151 09/404,085 01/20/04
6,679,153 10/281,238 01/20/04
6,679,154 10/302,960 01/20/04
6,679,167 10/382,513 01/20/04
6,679,170 10/029,317 01/20/04
6,679,171 09/799,545 01/20/04
6,679,172 10/170,075 01/20/04
6,679,175 09/909,493 01/20/04
6,679,176 09/586,379 01/20/04
6,679,178 10/023,260 01/20/04
6,679,181 09/865,088 01/20/04
6,679,193 10/041,201 01/20/04
6,679,199 10/283,296 01/20/04
6,679,200 10/183,737 01/20/04
6,679,204 10/216,199 01/20/04
6,679,207 10/370,621 01/20/04
6,679,210 10/144,902 01/20/04
6,679,221 10/002,118 01/20/04
6,679,226 09/997,371 01/20/04
6,679,228 10/069,316 01/20/04
6,679,230 10/391,549 01/20/04
6,679,238 10/101,988 01/20/04
6,679,241 10/253,951 01/20/04
6,679,242 10/338,159 01/20/04
6,679,244 10/292,424 01/20/04
6,679,246 10/151,091 01/20/04
6,679,247 10/145,670 01/20/04
6,679,251 09/807,104 01/20/04
6,679,253 10/222,127 01/20/04
6,679,255 10/085,350 01/20/04
6,679,263 10/201,399 01/20/04
6,679,267 09/945,226 01/20/04
6,679,268 10/098,838 01/20/04
6,679,281 10/019,084 01/20/04
6,679,282 09/987,147 01/20/04
6,679,288 10/265,847 01/20/04
6,679,291 10/285,197 01/20/04
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 66 |
6,679,295 10/206,606 01/20/04
6,679,296 10/385,477 01/20/04
6,679,301 10/095,268 01/20/04
6,679,309 10/121,686 01/20/04
6,679,312 09/740,629 01/20/04
6,679,315 10/047,871 01/20/04
6,679,316 09/677,720 01/20/04
6,679,317 10/007,240 01/20/04
6,679,334 09/867,972 01/20/04
6,679,338 10/031,550 01/20/04
6,679,340 10/200,143 01/20/04
6,679,345 09/880,002 01/20/04
6,679,351 10/077,324 01/20/04
6,679,352 10/045,983 01/20/04
6,679,357 10/199,398 01/20/04
6,679,359 10/157,122 01/20/04
6,679,361 10/199,537 01/20/04
6,679,367 10/167,026 01/20/04
6,679,369 09/984,120 01/20/04
6,679,372 10/043,519 01/20/04
6,679,375 09/831,437 01/20/04
6,679,378 09/856,992 01/20/04
6,679,382 09/926,582 01/20/04
6,679,386 10/159,244 01/20/04
6,679,403 10/092,575 01/20/04
6,679,408 10/323,783 01/20/04
6,679,412 10/223,517 01/20/04
6,679,415 10/212,290 01/20/04
6,679,416 10/066,601 01/20/04
6,679,419 10/062,945 01/20/04
6,679,421 09/968,160 01/20/04
6,679,424 10/287,494 01/20/04
6,679,429 09/768,548 01/20/04
6,679,431 10/313,375 01/20/04
6,679,438 10/353,133 01/20/04
6,679,446 10/321,527 01/20/04
6,679,451 09/937,037 01/20/04
6,679,454 10/123,823 01/20/04
6,679,469 10/193,007 01/20/04
6,679,474 10/424,802 01/20/04
6,679,476 09/879,473 01/20/04
6,679,482 09/946,275 01/20/04
6,679,483 10/249,411 01/20/04
6,679,495 10/306,508 01/20/04
6,679,498 09/967,825 01/20/04
6,679,502 09/942,020 01/20/04
6,679,510 10/055,330 01/20/04
6,679,513 09/926,374 01/20/04
6,679,514 09/949,589 01/20/04
6,679,519 10/360,455 01/20/04
6,679,531 09/848,037 01/20/04
6,679,532 09/987,199 01/20/04
6,679,535 09/443,464 01/20/04
6,679,536 10/252,229 01/20/04
6,679,540 10/383,382 01/20/04
6,679,543 10/177,314 01/20/04
6,679,567 09/658,542 01/20/04
6,679,568 09/770,910 01/20/04
6,679,571 09/891,889 01/20/04
6,679,586 10/242,781 01/20/04
6,679,604 10/219,259 01/20/04
6,679,609 10/097,414 01/20/04
6,679,611 10/279,066 01/20/04
6,679,614 10/013,574 01/20/04
6,679,620 10/122,470 01/20/04
6,679,624 09/551,045 01/20/04
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 67 |
6,679,630 10/113,241 01/20/04
6,679,635 09/916,301 01/20/04
6,679,637 10/206,994 01/20/04
6,679,649 10/330,809 01/20/04
6,679,655 09/992,906 01/20/04
6,679,658 10/215,709 01/20/04
6,679,665 10/090,367 01/20/04
6,679,668 09/730,793 01/20/04
6,679,670 10/243,202 01/20/04
6,679,685 10/118,156 01/20/04
6,679,688 10/076,908 01/20/04
6,679,694 09/958,837 01/20/04
6,679,700 10/131,454 01/20/04
6,679,701 09/533,256 01/20/04
6,679,704 10/079,332 01/20/04
6,679,715 10/152,631 01/20/04
6,679,716 10/324,006 01/20/04
6,679,723 09/990,904 01/20/04
6,679,728 10/329,344 01/20/04
6,679,732 10/076,155 01/20/04
6,679,742 10/178,735 01/20/04
6,679,748 10/340,343 01/20/04
6,679,749 10/104,796 01/20/04
6,679,752 10/441,305 01/20/04
6,679,754 10/013,106 01/20/04
6,679,761 10/111,410 01/20/04
6,679,764 09/793,683 01/20/04
6,679,768 09/920,046 01/20/04
6,679,780 10/273,128 01/20/04
6,679,792 10/346,265 01/20/04
6,679,793 10/070,040 01/20/04
6,679,809 10/212,494 01/20/04
6,679,815 09/817,565 01/20/04
6,679,825 10/068,368 01/20/04
6,679,832 09/054,840 01/20/04
6,679,838 09/754,892 01/20/04
6,679,840 09/677,365 01/20/04
6,679,845 09/928,539 01/20/04
6,679,847 10/136,880 01/20/04
6,679,852 09/614,269 01/20/04
6,679,855 09/870,368 01/20/04
6,679,859 09/530,075 01/20/04
6,679,860 09/885,072 01/20/04
6,679,866 09/483,540 01/20/04
6,679,869 09/640,165 01/20/04
6,679,873 10/462,182 01/20/04
6,679,876 09/982,780 01/20/04
6,679,880 09/910,026 01/20/04
6,679,885 09/995,425 01/20/04
6,679,898 09/965,124 01/20/04
6,679,904 09/284,664 01/20/04
6,679,905 09/795,164 01/20/04
6,679,908 09/752,341 01/20/04
6,679,913 09/291,443 01/20/04
6,679,914 09/712,100 01/20/04
6,679,922 09/645,076 01/20/04
6,679,924 10/355,641 01/20/04
6,679,938 10/055,912 01/20/04
6,679,940 10/070,946 01/20/04
6,679,947 10/237,603 01/20/04
6,679,959 09/767,297 01/20/04
6,679,960 09/840,909 01/20/04
6,679,963 09/987,522 01/20/04
6,679,974 10/089,800 01/20/04
6,679,975 10/036,416 01/20/04
6,679,979 10/015,528 01/20/04
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 68 |
6,679,986 09/571,894 01/20/04
6,679,987 09/432,742 01/20/04
6,679,991 09/831,789 01/20/04
6,679,993 09/913,012 01/20/04
6,679,995 09/913,458 01/20/04
6,679,998 10/227,262 01/20/04
6,680,001 10/135,283 01/20/04
6,680,011 09/683,177 01/20/04
6,680,012 10/093,272 01/20/04
6,680,019 09/700,799 01/20/04
6,680,022 09/998,299 01/20/04
6,680,029 09/823,068 01/20/04
6,680,042 09/706,809 01/20/04
6,680,047 09/925,715 01/20/04
6,680,052 09/465,478 01/20/04
6,680,053 09/865,483 01/20/04
6,680,055 09/980,063 01/20/04
6,680,061 09/749,233 01/20/04
6,680,068 09/898,107 01/20/04
6,680,073 09/545,486 01/20/04
6,680,079 09/871,742 01/20/04
6,680,086 09/743,165 01/20/04
6,680,089 09/983,514 01/20/04
6,680,098 10/019,090 01/20/04
6,680,101 09/560,999 01/20/04
6,680,107 10/045,160 01/20/04
6,680,113 09/501,435 01/20/04
6,680,128 09/963,605 01/20/04
6,680,133 09/731,704 01/20/04
6,680,141 09/795,016 01/20/04
6,680,142 09/939,288 01/20/04
6,680,144 10/140,033 01/20/04
6,680,154 10/431,314 01/20/04
6,680,157 09/687,189 01/20/04
6,680,171 09/489,155 01/20/04
6,680,172 09/571,479 01/20/04
6,680,175 09/234,395 01/20/04
6,680,182 08/379,611 01/20/04
6,680,185 09/889,463 01/20/04
6,680,188 10/238,709 01/20/04
6,680,189 09/786,256 01/20/04
6,680,192 09/726,653 01/20/04
6,680,204 09/926,368 01/20/04
6,680,210 09/895,643 01/20/04
6,680,215 10/272,707 01/20/04
6,680,216 10/187,241 01/20/04
6,680,229 09/770,909 01/20/04
6,680,257 09/916,877 01/20/04
6,680,260 10/244,412 01/20/04
6,680,268 10/217,235 01/20/04
6,680,269 09/892,364 01/20/04
6,680,275 09/788,371 01/20/04
6,680,293 10/139,946 01/20/04
6,680,297 09/605,304 01/20/04
6,680,298 09/724,114 01/20/04
6,680,299 09/917,107 01/20/04
6,680,306 10/176,235 01/20/04
6,680,309 10/337,506 01/20/04
6,680,313 10/182,179 01/20/04
6,680,317 10/221,908 01/20/04
6,680,318 10/149,981 01/20/04
6,680,320 10/202,850 01/20/04
6,680,321 09/631,116 01/20/04
6,680,322 09/728,316 01/20/04
6,680,323 09/873,746 01/20/04
6,680,324 10/000,280 01/20/04
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 69 |
6,680,327 10/221,165 01/20/04
6,680,330 10/225,333 01/20/04
6,680,331 09/907,547 01/20/04
6,680,336 10/077,154 01/20/04
6,680,339 10/100,399 01/20/04
6,680,343 09/720,007 01/20/04
6,680,355 09/786,360 01/20/04
6,680,369 09/883,096 01/20/04
6,680,371 09/921,640 01/20/04
6,680,375 10/114,464 01/20/04
6,680,379 09/614,891 01/20/04
6,680,380 09/398,412 01/20/04
6,680,385 10/055,016 01/20/04
6,680,387 09/841,351 01/20/04
6,680,390 10/173,277 01/20/04
6,680,401 09/807,955 01/20/04
6,680,402 10/261,122 01/20/04
6,680,403 10/030,369 01/20/04
6,680,404 09/979,440 01/20/04
6,680,406 10/322,786 01/20/04
6,680,409 09/900,409 01/20/04
6,680,416 09/646,003 01/20/04
6,680,418 10/023,025 01/20/04
6,680,424 08/849,303 01/20/04
6,680,426 10/223,160 01/20/04
6,680,427 09/535,315 01/20/04
6,680,431 10/345,840 01/20/04
6,680,435 09/628,756 01/20/04
6,680,444 10/283,203 01/20/04
6,680,451 09/572,702 01/20/04
6,680,457 10/047,567 01/20/04
6,680,461 10/118,978 01/20/04
6,680,462 10/282,114 01/20/04
6,680,466 09/814,544 01/20/04
6,680,467 10/299,669 01/20/04
6,680,468 10/218,453 01/20/04
6,680,470 09/992,527 01/20/04
6,680,473 10/014,344 01/20/04
6,680,479 09/601,325 01/20/04
6,680,480 09/987,209 01/20/04
6,680,499 09/988,138 01/20/04
6,680,510 09/996,753 01/20/04
6,680,513 10/216,361 01/20/04
6,680,543 09/341,595 01/20/04
6,680,546 09/576,400 01/20/04
6,680,551 09/931,921 01/20/04
6,680,563 09/893,115 01/20/04
6,680,565 09/983,003 01/20/04
6,680,567 10/094,652 01/20/04
6,680,571 09/441,972 01/20/04
6,680,581 10/270,668 01/20/04
6,680,582 09/684,196 01/20/04
6,680,583 10/092,606 01/20/04
6,680,591 10/286,163 01/20/04
6,680,593 10/087,635 01/20/04
6,680,599 10/026,550 01/20/04
6,680,601 10/160,577 01/20/04
6,680,606 09/701,840 01/20/04
6,680,607 10/146,195 01/20/04
6,680,609 10/193,514 01/20/04
6,680,614 10/013,362 01/20/04
6,680,617 10/266,611 01/20/04
6,680,623 10/029,201 01/20/04
6,680,625 10/066,031 01/20/04
6,680,642 10/154,045 01/20/04
6,680,659 10/133,062 01/20/04
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 70 |
6,680,666 10/265,966 01/20/04
6,680,671 09/812,561 01/20/04
6,680,672 09/779,246 01/20/04
6,680,673 09/272,309 01/20/04
6,680,676 09/491,671 01/20/04
6,680,684 10/331,552 01/20/04
6,680,686 10/213,627 01/20/04
6,680,688 10/339,347 01/20/04
6,680,700 09/973,308 01/20/04
6,680,702 10/043,987 01/20/04
6,680,707 10/043,524 01/20/04
6,680,716 09/802,364 01/20/04
6,680,719 10/224,330 01/20/04
6,680,741 09/424,424 01/20/04
6,680,744 10/096,904 01/20/04
6,680,745 10/012,096 01/20/04
6,680,750 09/269,753 01/20/04
6,680,758 08/784,440 01/20/04
6,680,759 09/778,060 01/20/04
6,680,761 09/490,776 01/20/04
6,680,762 10/154,713 01/20/04
6,680,775 09/671,481 01/20/04
6,680,776 09/960,274 01/20/04
6,680,781 10/082,120 01/20/04
6,680,786 09/502,468 01/20/04
6,680,797 09/888,041 01/20/04
6,680,801 09/829,842 01/20/04
6,680,804 09/960,309 01/20/04
6,680,810 09/733,088 01/20/04
6,680,815 09/726,444 01/20/04
6,680,816 09/841,685 01/20/04
6,680,819 10/411,204 01/20/04
6,680,826 09/810,821 01/20/04
6,680,828 10/165,562 01/20/04
6,680,839 10/034,167 01/20/04
6,680,840 09/943,704 01/20/04
6,680,853 10/351,950 01/20/04
6,680,854 10/222,476 01/20/04
6,680,868 10/044,706 01/20/04
6,680,873 10/042,937 01/20/04
6,680,878 09/422,352 01/20/04
6,680,882 09/207,333 01/20/04
6,680,883 10/387,386 01/20/04
6,680,886 09/548,264 01/20/04
6,680,890 10/199,019 01/20/04
6,680,891 10/429,422 01/20/04
6,680,892 09/994,715 01/20/04
6,680,895 09/674,614 01/20/04
6,680,896 09/950,021 01/20/04
6,680,898 09/964,711 01/20/04
6,680,903 09/348,253 01/20/04
6,680,905 09/351,346 01/20/04
6,680,907 09/392,336 01/20/04
6,680,914 09/324,420 01/20/04
6,680,915 09/313,859 01/20/04
6,680,924 09/737,184 01/20/04
6,680,929 09/389,322 01/20/04
6,680,931 09/344,139 01/20/04
6,680,935 09/475,160 01/20/04
6,680,937 09/690,843 01/20/04
6,680,939 09/661,844 01/20/04
6,680,946 09/302,286 01/20/04
6,680,957 09/515,493 01/20/04
6,680,965 10/057,310 01/20/04
6,680,970 09/577,216 01/20/04
6,680,981 09/501,369 01/20/04
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 71 |
6,680,983 10/041,716 01/20/04
6,680,985 09/639,446 01/20/04
6,680,988 09/531,147 01/20/04
6,680,989 09/430,443 01/20/04
6,680,990 09/578,698 01/20/04
6,680,993 09/725,017 01/20/04
6,680,994 10/139,463 01/20/04
6,680,995 09/682,914 01/20/04
6,681,008 09/870,692 01/20/04
6,681,026 10/010,702 01/20/04
6,681,035 09/647,269 01/20/04
6,681,036 09/587,237 01/20/04
6,681,038 09/486,234 01/20/04
6,681,040 09/285,878 01/20/04
6,681,044 09/538,101 01/20/04
6,681,053 09/368,631 01/20/04
6,681,070 10/056,077 01/20/04
6,681,073 09/812,097 01/20/04
6,681,074 09/670,019 01/20/04
6,681,076 09/551,724 01/20/04
6,681,083 09/665,360 01/20/04
6,681,086 10/287,145 01/20/04
6,681,095 10/369,608 01/20/04
6,681,100 09/524,745 01/20/04
6,681,109 09/567,454 01/20/04
6,681,112 10/213,444 01/20/04
6,681,116 09/304,185 01/20/04
6,681,123 09/325,583 01/20/04
6,681,140 09/601,230 01/20/04
6,681,144 09/806,028 01/20/04
6,681,145 08/867,857 01/20/04
6,681,146 09/954,049 01/20/04
6,681,153 09/631,373 01/20/04
6,681,166 10/191,130 01/20/04
6,681,179 10/075,229 01/20/04
6,681,186 09/658,161 01/20/04
6,681,194 10/036,576 01/20/04
6,681,198 09/931,623 01/20/04
6,681,221 09/691,966 01/20/04
6,681,224 09/795,489 01/20/04
6,681,226 09/681,152 01/20/04
6,681,232 09/861,887 01/20/04
6,681,245 09/344,328 01/20/04
6,681,257 09/459,498 01/20/04
6,681,260 09/553,477 01/20/04
6,681,267 09/819,586 01/20/04
6,681,277 09/644,204 01/20/04
6,681,282 09/653,180 01/20/04
6,681,294 09/537,354 01/20/04
6,681,309 10/058,185 01/20/04
6,681,331 09/309,755 01/20/04
6,681,343 09/644,696 01/20/04
6,681,355 09/538,260 01/20/04
6,681,361 09/565,505 01/20/04
6,681,368 09/225,325 01/20/04
6,681,372 09/429,168 01/20/04
6,681,375 09/905,451 01/20/04
6,681,381 09/475,568 01/20/04
6,681,395 09/271,383 01/20/04
6,681,398 09/228,929 01/20/04
PATENTS WHICH EXPIRED ON January 22, 2012
DUE TO FAILURE TO PAY MAINTENANCE FEES
Patent Application Issue
Number Number Date
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 72 |
7,320,145 11/474,131 01/22/08
7,320,147 11/243,681 01/22/08
7,320,148 11/287,439 01/22/08
7,320,150 10/890,835 01/22/08
7,320,155 11/075,122 01/22/08
7,320,161 10/540,116 01/22/08
7,320,165 11/456,757 01/22/08
7,320,172 11/032,580 01/22/08
7,320,176 11/025,951 01/22/08
7,320,180 10/141,185 01/22/08
7,320,185 10/462,421 01/22/08
7,320,196 11/318,733 01/22/08
7,320,207 11/210,600 01/22/08
7,320,210 11/178,124 01/22/08
7,320,217 10/553,099 01/22/08
7,320,223 11/047,343 01/22/08
7,320,227 10/399,820 01/22/08
7,320,231 10/829,020 01/22/08
7,320,234 11/338,250 01/22/08
7,320,261 11/036,388 01/22/08
7,320,266 11/591,055 01/22/08
7,320,273 10/540,583 01/22/08
7,320,276 10/804,015 01/22/08
7,320,280 11/147,678 01/22/08
7,320,282 10/524,419 01/22/08
7,320,291 11/432,701 01/22/08
7,320,292 11/725,003 01/22/08
7,320,293 10/532,675 01/22/08
7,320,298 11/057,309 01/22/08
7,320,305 11/541,257 01/22/08
7,320,306 10/581,209 01/22/08
7,320,310 10/551,461 01/22/08
7,320,317 11/415,900 01/22/08
7,320,321 10/787,522 01/22/08
7,320,339 11/219,105 01/22/08
7,320,341 11/383,772 01/22/08
7,320,342 11/413,261 01/22/08
7,320,343 10/559,948 01/22/08
7,320,348 10/423,645 01/22/08
7,320,349 10/740,148 01/22/08
7,320,350 11/177,579 01/22/08
7,320,351 11/064,947 01/22/08
7,320,375 11/184,719 01/22/08
7,320,382 11/076,000 01/22/08
7,320,390 11/057,810 01/22/08
7,320,394 11/261,148 01/22/08
7,320,397 11/145,913 01/22/08
7,320,406 11/118,055 01/22/08
7,320,410 11/636,399 01/22/08
7,320,417 10/240,968 01/22/08
7,320,418 11/476,465 01/22/08
7,320,433 11/607,993 01/22/08
7,320,437 10/467,778 01/22/08
7,320,441 10/549,577 01/22/08
7,320,445 11/107,482 01/22/08
7,320,447 11/215,175 01/22/08
7,320,449 11/364,109 01/22/08
7,320,451 10/862,196 01/22/08
7,320,453 11/065,526 01/22/08
7,320,459 10/488,141 01/22/08
7,320,460 11/515,190 01/22/08
7,320,466 11/345,578 01/22/08
7,320,471 11/427,901 01/22/08
7,320,473 11/690,980 01/22/08
7,320,475 11/148,355 01/22/08
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 73 |
7,320,489 11/422,072 01/22/08
7,320,491 10/520,247 01/22/08
7,320,495 10/555,302 01/22/08
7,320,498 11/293,767 01/22/08
7,320,499 11/260,747 01/22/08
7,320,504 11/207,136 01/22/08
7,320,506 10/605,596 01/22/08
7,320,514 11/273,133 01/22/08
7,320,515 11/281,724 01/22/08
7,320,521 11/174,714 01/22/08
7,320,526 10/904,451 01/22/08
7,320,530 11/476,265 01/22/08
7,320,537 11/329,734 01/22/08
7,320,541 10/916,068 01/22/08
7,320,548 10/894,332 01/22/08
7,320,549 11/129,888 01/22/08
7,320,553 11/555,876 01/22/08
7,320,571 10/663,653 01/22/08
7,320,573 10/631,360 01/22/08
7,320,602 11/635,224 01/22/08
7,320,609 11/627,110 01/22/08
7,320,611 11/499,932 01/22/08
7,320,618 11/355,776 01/22/08
7,320,628 11/404,203 01/22/08
7,320,630 11/320,100 01/22/08
7,320,631 11/496,664 01/22/08
7,320,638 11/381,190 01/22/08
7,320,647 11/141,277 01/22/08
7,320,652 11/238,268 01/22/08
7,320,657 11/196,417 01/22/08
7,320,666 10/664,195 01/22/08
7,320,672 10/547,885 01/22/08
7,320,680 10/928,030 01/22/08
7,320,684 11/232,193 01/22/08
7,320,687 11/121,747 01/22/08
7,320,703 11/077,890 01/22/08
7,320,719 10/504,494 01/22/08
7,320,728 11/557,291 01/22/08
7,320,735 11/093,394 01/22/08
7,320,741 10/466,640 01/22/08
7,320,748 10/938,565 01/22/08
7,320,758 10/903,410 01/22/08
7,320,760 10/496,672 01/22/08
7,320,764 10/709,510 01/22/08
7,320,765 10/709,388 01/22/08
7,320,783 10/619,809 01/22/08
7,320,784 09/913,401 01/22/08
7,320,786 11/297,880 01/22/08
7,320,794 11/276,614 01/22/08
7,320,796 10/622,407 01/22/08
7,320,797 10/604,999 01/22/08
7,320,798 11/418,626 01/22/08
7,320,799 11/418,871 01/22/08
7,320,803 10/076,514 01/22/08
7,320,813 10/735,208 01/22/08
7,320,816 10/736,233 01/22/08
7,320,819 10/808,862 01/22/08
7,320,847 10/705,218 01/22/08
7,320,857 10/888,401 01/22/08
7,320,861 10/485,454 01/22/08
7,320,873 10/344,872 01/22/08
7,320,877 10/070,277 01/22/08
7,320,878 10/494,903 01/22/08
7,320,880 10/478,926 01/22/08
7,320,883 10/450,681 01/22/08
7,320,887 10/836,959 01/22/08
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 74 |
7,320,893 10/795,237 01/22/08
7,320,951 10/257,824 01/22/08
7,320,953 10/938,384 01/22/08
7,320,955 11/348,152 01/22/08
7,320,960 10/316,205 01/22/08
7,320,964 10/491,644 01/22/08
7,320,972 10/986,570 01/22/08
7,320,973 10/724,179 01/22/08
7,320,975 10/505,146 01/22/08
7,320,977 10/511,225 01/22/08
7,320,981 10/332,562 01/22/08
7,320,982 10/773,073 01/22/08
7,320,987 11/726,339 01/22/08
7,320,989 10/924,181 01/22/08
7,320,996 10/218,910 01/22/08
7,320,998 10/888,480 01/22/08
7,321,000 10/484,241 01/22/08
7,321,003 11/205,140 01/22/08
7,321,023 09/968,433 01/22/08
7,321,025 10/483,328 01/22/08
7,321,035 10/991,505 01/22/08
7,321,040 10/776,953 01/22/08
7,321,044 10/270,080 01/22/08
7,321,045 10/770,380 01/22/08
7,321,055 11/498,752 01/22/08
7,321,056 10/596,256 01/22/08
7,321,059 10/492,606 01/22/08
7,321,061 11/064,241 01/22/08
7,321,062 10/753,548 01/22/08
7,321,066 10/544,764 01/22/08
7,321,068 10/581,802 01/22/08
7,321,072 10/545,770 01/22/08
7,321,073 10/799,173 01/22/08
7,321,074 10/129,599 01/22/08
7,321,075 10/234,854 01/22/08
7,321,077 10/719,996 01/22/08
7,321,092 11/273,926 01/22/08
7,321,093 11/512,894 01/22/08
7,321,098 10/709,209 01/22/08
7,321,113 11/137,675 01/22/08
7,321,121 11/195,726 01/22/08
7,321,128 10/529,616 01/22/08
7,321,132 11/080,293 01/22/08
7,321,148 10/913,275 01/22/08
7,321,152 11/498,800 01/22/08
7,321,173 11/347,927 01/22/08
7,321,183 10/890,989 01/22/08
7,321,186 10/812,903 01/22/08
7,321,208 11/430,026 01/22/08
7,321,218 10/439,862 01/22/08
7,321,232 11/348,246 01/22/08
7,321,233 11/652,788 01/22/08
7,321,253 10/499,867 01/22/08
7,321,262 10/570,324 01/22/08
7,321,270 11/404,443 01/22/08
7,321,274 11/011,914 01/22/08
7,321,280 10/842,431 01/22/08
7,321,287 11/429,322 01/22/08
7,321,291 10/973,493 01/22/08
7,321,303 11/242,846 01/22/08
7,321,304 11/148,840 01/22/08
7,321,308 11/217,992 01/22/08
7,321,310 11/348,014 01/22/08
7,321,315 10/749,790 01/22/08
7,321,321 11/139,178 01/22/08
7,321,338 10/743,408 01/22/08
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 75 |
7,321,345 10/849,874 01/22/08
7,321,356 11/012,970 01/22/08
7,321,358 11/213,369 01/22/08
7,321,363 10/775,866 01/22/08
7,321,407 10/677,875 01/22/08
7,321,414 10/508,936 01/22/08
7,321,461 10/699,846 01/22/08
7,321,465 11/071,699 01/22/08
7,321,476 11/192,860 01/22/08
7,321,477 11/335,127 01/22/08
7,321,491 11/308,273 01/22/08
7,321,517 11/260,200 01/22/08
7,321,529 10/504,755 01/22/08
7,321,530 10/830,213 01/22/08
7,321,541 10/530,942 01/22/08
7,321,542 11/033,625 01/22/08
7,321,543 10/923,674 01/22/08
7,321,574 10/743,207 01/22/08
7,321,578 10/621,688 01/22/08
7,321,582 10/897,160 01/22/08
7,321,586 10/613,016 01/22/08
7,321,594 10/736,984 01/22/08
7,321,599 10/209,118 01/22/08
7,321,605 10/851,247 01/22/08
7,321,609 10/675,185 01/22/08
7,321,620 10/383,746 01/22/08
7,321,654 10/857,927 01/22/08
7,321,656 10/655,576 01/22/08
7,321,657 10/740,873 01/22/08
7,321,666 10/698,409 01/22/08
7,321,676 10/859,427 01/22/08
7,321,681 11/582,585 01/22/08
7,321,699 10/657,723 01/22/08
7,321,714 10/559,850 01/22/08
7,321,726 11/021,488 01/22/08
7,321,733 10/515,228 01/22/08
7,321,753 10/104,123 01/22/08
7,321,754 10/486,332 01/22/08
7,321,763 10/020,240 01/22/08
7,321,766 10/348,556 01/22/08
7,321,802 11/120,347 01/22/08
7,321,803 10/842,370 01/22/08
7,321,805 11/005,330 01/22/08
7,321,818 10/507,276 01/22/08
7,321,830 09/960,706 01/22/08
7,321,840 11/146,672 01/22/08
7,321,862 11/268,706 01/22/08
7,321,866 10/146,912 01/22/08
7,321,868 10/291,685 01/22/08
7,321,878 11/087,130 01/22/08
7,321,885 11/183,341 01/22/08
7,321,890 10/781,488 01/22/08
7,321,921 10/889,859 01/22/08
7,321,938 09/965,030 01/22/08
7,321,955 10/935,080 01/22/08
7,321,967 10/423,253 01/22/08
7,321,977 10/504,095 01/22/08
7,322,003 11/064,412 01/22/08
7,322,006 09/472,062 01/22/08
7,322,025 10/622,324 01/22/08
7,322,029 10/434,025 01/22/08
| Patents Reinstated Due to the Acceptance of a Late Maintenance Fee from 02/13/2012 |
Patents Reinstated Due to the Acceptance of a
Late Maintenance Fee from 02/13/2012
Patent Application Filing Issue Granted
Number Number Date Date Date
5,733,590 08/749,739 11/15/96 03/31/98 02/13/12
5,871,499 08/842,985 04/25/97 02/16/99 02/16/12
5,884,924 08/944,262 10/06/97 03/23/99 02/15/12
5,891,949 08/850,811 05/02/97 04/06/99 02/17/12
5,995,858 08/969,407 11/07/97 11/30/99 02/16/12
6,007,496 08/774,799 12/30/96 12/28/99 02/15/12
6,014,843 09/023,445 02/13/98 01/18/00 02/16/12
6,316,141 09/419,940 10/18/99 11/13/01 02/14/12
6,443,817 09/778,525 02/06/01 09/03/02 02/14/12
6,554,078 09/888,983 06/25/01 04/29/03 02/16/12
6,616,901 09/598,348 06/21/00 09/09/03 02/16/12
6,620,393 09/911,213 07/23/01 09/16/03 02/16/12
6,648,799 09/843,022 04/26/01 11/18/03 02/17/12
6,658,454 09/499,502 02/07/00 12/02/03 02/14/12
6,664,359 08/930,771 10/02/97 12/16/03 02/15/12
6,668,525 10/231,270 08/30/02 12/30/03 02/15/12
6,960,512 10/602,241 06/24/03 11/01/05 02/13/12
6,971,612 10/716,088 11/18/03 12/06/05 02/13/12
6,997,653 10/181,369 07/18/02 02/14/06 02/13/12
7,020,997 10/179,944 06/25/02 04/04/06 02/13/12
7,042,902 10/215,806 08/08/02 05/09/06 02/13/12
7,146,402 09/945,130 08/31/01 12/05/06 02/14/12
7,164,368 10/724,550 11/28/03 01/16/07 02/15/12
7,227,158 11/269,147 11/08/05 06/05/07 02/13/12
7,239,651 10/094,768 03/11/02 07/03/07 02/17/12
7,243,035 10/444,249 05/23/03 07/10/07 02/13/12
7,253,401 10/809,066 03/15/04 08/07/07 02/13/12
7,260,767 10/924,038 08/23/04 08/21/07 02/17/12
7,273,595 11/027,972 12/30/04 09/25/07 02/16/12
7,278,900 11/087,929 03/23/05 10/09/07 02/15/12
7,287,356 10/663,419 09/16/03 10/30/07 02/16/12
7,293,483 11/464,745 08/15/06 11/13/07 02/13/12
7,305,329 11/384,606 03/20/06 12/04/07 02/13/12
7,310,356 10/603,038 06/24/03 12/18/07 02/13/12
7,310,671 09/650,867 08/30/00 12/18/07 02/13/12
7,315,242 10/817,000 04/02/04 01/01/08 02/17/12
7,318,476 10/990,617 11/16/04 01/15/08 02/14/12
7,318,488 11/429,041 05/05/06 01/15/08 02/14/12
7,319,829 11/212,218 08/26/05 01/15/08 02/13/12
| Reissue Applications Filed |
Reissue Applications Filed
Notice under 37 CFR 1.11(b). The reissue applications listed below
are open to public inspection by the general public through the Image
File Wrapper (IFW) system (http://portal.uspto.gov/external/portal/pair)
on the USPTO internet web site (www.uspto.gov), and copies may be obtained
by paying the fee therefor (37 CFR 1.19).
D. 643,785, Re. S.N.: 29/412,583, Feb. 02, 2012, Cl.: D12/111, FRAME FOR A
BICYCLE, Song Joon Kyu, Owner of Record: Mando Corporation, Attorney or Agent:
Stephen A. Becker, Ex. Gp.: 2913
6,500,186, Re. S.N. 13/368,116, Feb. 07, 2012, Cl. 606,159, IN-STENT
ABLATIVE TOOL, Daniel M. Lafontaine, et al., Owner of Record: Boston
Scientific Scimed, Inc., Maple Grove, MN, Attorney or Agent: Jason Burgmaier,
Ex. Gp.: 3731
6,597,792, Re. S.N.: 13/299,298, Nov. 17, 2011, Cl: 381/071, HEADSET NOISE
REDUCING, Tadaaki MaRoman Sapiejewski, et.al., Owner of Record: Bose
Corporation, Framingham, MA, Attorney or Agent: Charles Hieken, Ex. Gp.: 2614
6,738,263, Re. S.N. 13,350,978, Jan. 16, 2012, Cl. 438,000, STACKABLE BALL
GRID ARRAY PACKAGE, David J. Corisis et. al., Owner of Record: ROUND ROCK
RESEARCH, LLC., Attorney or Agent: John J. Farrell, Ex. Gp.: 2826
6,793,296, Re. S.N. 13,352,689, Jan. 18, 2012, Cl. 305,000, ENDLESS
TRACTION BAND WITH ASYMMETRICAL SUPPORT, Andre Deland et. al., Owner of
Record: SOUCY INTERNATIONAL INC., Attorney or Agent: Michael B. Lasky,
Ex. Gp.: 3617
7,168,590, Re. S.N.: 13,313,294, Dec. 07, 2011, CL: 220, TRUCK BED TOOLBOX
LID, Larry K. Jones, et.al., Owner of Record: Thule Sweden AB, Attorney or
Agent: Thomas a Corrado, Ex. GP.: 3788
7,212,465, Re. S.N.: 13,367,023, Feb. 06, 2012, CL: 327, CLOCK SIGNAL
GENERATION APPARATUS FOR USE IN SEMICONDUCTOR MEMORY DEVICE AND ITS METHOD,
Tae-Jin Kang, et,al., Owner of Record: 658868 N.B. Inc, Attorney or Agent:
James Ortega, Ex. GP.: 2816
7,529,681, Re. S.N. 13,368,201, Feb. 07, 2012, Cl. 705,001, TICKET
TRACKING, REMINDING AND REDEEMING SYSTEM AND METHOD, Robert G. Barnes, et al.,
Owner of Record: American Express Travel Related Services Company, Inc., New
York, NY, Attorney or Agent: Todd Komaromy, Ex. Gp.: 3629
7,634,017, Re. S.N.: 13,326,024, Dec. 14, 2011, CL: 375, WIRELESS
COMMUNICATION SYSTEM, Ryo Sawai, Owner of Record: Sony Corporation,
Attorney or Agent: Bradley D. Lytle, Ex. GP.: 2611
7,655,535, Re. S.N. 13,363,073, Jan. 31, 2012, Cl. 257,173, METHOD FOR
FABRICATING SEMICONDUCTOR DEVICE HAVING TRENCH ISOLATION LAYER, Hyo Seob Yoon
et. al., Owner of Record: HYNIX SEMICONDUCTOR INC., Attorney or Agent:
Jennifer Burnette, Ex. Gp.: 2811
7,655,581, Re. S.N. 13,385,113, Feb. 02, 2012, Cl. 442,205, HYBRID THREE-
DIMENSIONAL WOVEN,LAMINATED STRUTS FOR COMPOSITE STRUCTURAL APPLICATIONS,
Jonathan Goering, Owner of Record: Albany Engineered Composites, Inc.,
Rochester, NH, Attorney or Agent: Ronald R. Santucci, Ex. Gp.: 1786
7,657,706, Re. S.N. 13,365,136, Feb. 02, 2012, Cl. 711,156, HIGH SPEED
MEMORY AND INPUT,OUTPUT PROCESSOR SUBSYSTEM FOR EFFICIENTLY ALLOCATING AND
USING HIGH-SPEED MEMORY AND SLOWER-SPEED MEMORY, Sundar Iyer, Owner of Record:
Cisco Technology, Inc., San Jose, CA, Attorney or Agent: Stephen C. Durant,
Ex. Gp.: 2189
7,658,971, Re. S.N.: 13,369,269, Feb. 08, 2012, CL: 423, METHOD OF
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 78 |
PRODUCING CARBON NANOSTRUCTURE, Takeshi HIKATA, Owner of Record: Sumitomo
Electric Industries, LTD., Attorney or Agent: Ted Tittmaster, Ex. GP.: 1736
7,665,656, Re. S.N. 13/367,658, Feb. 07, 2012, Cl. 235/379, ELECTRONIC
FUND TRANSFER OR TRANSACTION SYSTEM, James G. Gatto, Owner of Record:
Arigern Capital L.L.C., Attorney or Agent: David S. Lee, Ex. Gp.: 2876
7,928,249, Re. S.N. 13,396,252, Feb. 14, 2012, Cl. 549,059, CONJUGATED
MONOMERS AND POLYMERS AND PREPARATION AND USE THEREOF, Tobin J. Marks, et al.,
Owner of Record: Northwestern University, Evanston, IL, Attorney or Agent:
Karen K. Chan, Ex. Gp.: 1622
7,939,322, Re. S.N. 13,372,641, Feb. 14, 2012, Cl. 435,377, CELLS
EXPRESSING PLURIPOTENCY MARKERS AND EXPRESSING MARKERS CHARACTERISTIC OF THE
DEFINITIVE ENDODERM, Alireza Rezania, Owner of Record: Centocor Ortho Biotech
Inc., Horsham, PA, Attorney or Agent: Mark R. Warfield, Ex. Gp.: 1653
7,962,397, Re. S.N. 13,372,416, Feb. 13, 2012, Cl. 705,036, EMPLOYEE STOCK
OPTION APPRECIATION RIGHTS SECURITIES AUCTION PROCESS, William David Hemingway,
et al., Owner of Record: Zion Bancorporation, Salt Lake City, UT, Attorney or
Agent: Kory Christensen, Ex. Gp.: 3693
7,962,397, Re. S.N. 13,396,442, Feb. 14, 2012, Cl. 705,036, ESTIMATING A
VALUE OF AN ASSET USING A DERIVATIVE SECURITIES AUCTION PROCESS, William David
Hemingway, et al., Owner of Record: Zion Bancorporation, Salt Lake City, UT,
Attorney or Agent: Kory Christensen, Ex. Gp.: 3693
8,027,698, Re. S.N.: 13/357,681, Jan. 25, 2012, Cl.: 455/522, COMMUNICATION
METHOD, Kazuhito Niwano, et.al., Owner of Record: Research In Motion Limited,
Waterloo, CANADA, Attorney or Agent: Jeffrey A. Berkowitz, Ex. Gp.: 2618
8,093,467, Re. S.N.: 13/360,032, Jan. 27, 2012, Cl.: 800/312, SOYBEAN
CULTIVAR S080186, Harumasa Arita, et.al., Owner of Record: Rohto
Pharmaceutical Co, Ltd, Osaka-shi, JP, Attorney or Agent: Drew Hissong,
Ex. Gp.: 1655
| Requests for Ex Parte Reexamination Filed |
Requests for Ex Parte Reexamination Filed
5,337,753, Reexam. C.N. 90/012,104, Requested Date: Jan. 25, 2012,
Cl. 600/014, Title: HEART RATE MONITOR, Inventor: Gregory Lekhtman,
Owners of Record: Biosig Instruments, Inc., Canada, Attorney or Agent:
Chilton Alix & Van Kirk, Hartford, CT, Ex. Gp.: 3992, Requester: Nautilus,
Inc., Matthew C. Phillips, Stoel Rives, LLP., Portland, OR
5,689,094, Reexam. C.N. 90/012,103, Requested Date: Jan. 24, 2012,
Cl. 187/384, Title: ELEVATOR INSTALLATION, Inventor: Paul Friedli et al.,
Owners of Record: Inventio AG, Switzerland, Attorney or Agent: Greenblum &
Bernstein, PLC., Reston, VA, Ex. Gp.: 3992, Requester: W. Todd Baker, Oblon
Spivak McClelland Maier & Neustadt, LLP., Alexandria, VA
6,478,274, Reexam. C.N. 90/012,099, Requested Date: Jan. 20, 2012,
Cl. 248/274, Title: ARM APPARATUS FOR MOUNTING ELECTRONIC DEVICES, Inventer:
Todd N. Oddsen, Jr., Owners of Record: Innovative Office Products, Inc.,
Easton, PA, Attorney or Agent: Desing IP, PC., Allentown, PA, Ex. Gp.: 3993,
Requester: Carl A. Hjort, III, SpaceCo, Business Solution, Inc., Denver, CO
7,328,845, Reexam. C.N. 90/012,102, Requested Date: Jan. 26, 2012,
Cl. 235/454, Title: METHOD FOR PRODUCING INDICATORS AND PROCESSING APPARATUS
AND SYSTEM UTILIZING THE INDICATORS, Inventor: Yao-Hung Tsai, Owners of
Record: Sonix Technology, Co., LTD., Taiwan, Attorney or Agent: Jianq Chyun
Intellectual Property Office, Taiwan, Ex. Gp.: 3992, Requester: Generalplus
Technology, Inc., Weiguo Chen, Finnegan Henderson Farabow Garrett & Dunner,
LLP., Washington, DC
7,357,891, Reexam. C.N. 90/012,098, Requested Date: Jan. 20, 2012,
Cl. 264/211, Title: PROCESS FOR MAKING AN INGESTIBLE FILM, Inventor: Robert
K. Yang et al., Owners of Record: MonoSol RX, LLC., Portage, IN, Attorney or
Agent: Hoffmann & Baron, LLP., Syosset, NY, Ex. Gp.: 3991, Requester:
Danielle L. Herritt, McCarter & English, LLP., Boston, MA
7,732,243, Reexam. C.N. 90/012,107, Requested Date: Jan. 25, 2012,
Cl. 257/448, Title: SUBSTRATE STRUCTURES FOR INTEGRATED SERIES CONNECTED
PHOTOVOLTAIC ARRAYS AND PROCESS OF MANUFACTURE OF SUCH ARRAYS, Inventor:
Daniel Luch, Owners of Record: Solannex, Inc., Morgan Hill, CA, Attorney or
Agent: Daniel Luch, Morgan Hill, CA, Ex. Gp.: 3992, Requester: Nanosolar,
Inc., Paul M. Anderson, Paul M. Anderson, PLLC., Austin, TX
7,898,053, Reexam. C.N. 90/012,105, Requested Date: Jan. 25, 2012,
Cl. 257/448, Title: SUBSTRATE STRUCTURES FOR INTEGRATED SERIES CONNECTED
PHOTOVOLTAIC ARRAYS AND PROCESS OF MANUFACTURE OF SUCH ARRAYS, Inventor:
Daniel Luch, Owners of Record: Solannex, Inc., Morgan Hill, CA, Attorney or
Agent: Daniel Luch, Morgan Hill, CA, Ex. Gp.: 3992, Requester: Nanosolar,
Inc., Paul M. Anderson, Paul M. Anderson, PLLC., Austin, TX
7,898,054, Reexam. C.N. 90/012,106, Requested Date: Jan. 25, 2012,
Cl. 257/448, Title: SUBSTRATE STRUCTURES FOR INTEGRATED SERIES CONNECTED
PHOTOVOLTAIC ARRAYS AND PROCESS OF MANUFACTURE OF SUCH ARRAYS, Inventor:
Daniel Luch, Owners of Record: Solannex, Inc., Morgan Hill, CA, Attorney or
Agent: Daniel Luch, Morgan Hill, CA, Ex. Gp.: 3992, Requester: Nanosolar,
Inc., Paul M. Anderson, Paul M. Anderson, PLLC., Austin, TX
8,075,461, Reexam. C.N. 90/012,101, Requested Date: Jan. 23, 2012,
Cl. 482/126, Title: REINFORCED CORD WELL LIFTING BAR ASSEMBLY, Inventor:
Douglas C. Terry et al., Owners of Record: Terry C. Douglas, Salt Lake City,
UT, Attorney or Agent: Jeffrey M. Lillywhite, PC., Draper, UT, Ex. Gp.:
3993, Requester: Craig A. Fieschko, Dewitt Ross & Stevens, SC., Madison, WI
| Requests for Inter Partes Reexamination Filed |
Requests for Inter Partes Reexamination Filed
6,860,925, Reexam. C.N.: 95/001,879, Requested Date: Feb. 1, 2012,
Cl.: 106/001, Title: PRINTED CIRCUIT BOARD MANUFACTURE, Inventor:
Andrew McIntosh Soutar et al., Owners of Record: Enthone, Inc., West Haven,
CT, Attorney or Agent: Senniger Powers, LLP., St. Louis, MO, Ex. Gp.: 3991,
Requester: Third Party Requester: MacDermid, Inc.; (Att'y Is: Arthur G.
Schaier, Carmody & Torrance, LLP., Waterbury, CT), Real Party in Interest:
Same As Third Party Requester
7,086,131, Reexam. C.N.: 95/001,878, Requested Date: Jan. 27, 2012,
Cl.: 029/282, Title: DEFORMABLE MECHANICAL PIPE COUPLING, Inventor: John Gibb
et al., Owners of Record: Victaulic Company, Easton, PA, Attorney or Agent:
Ballard Spahr, LLP., Atlanta, GA, Ex. Gp.: 3993, Requester: Third Party
Requester: Anvil International, LLC.; (Att'y Is: Jeffrey R. Kuester, Taylor
English Duma, LLP., Atlanta, GA), Real Party in Interest: Same As Third Party
Requester
7,585,527, Reexam. C.N.: 95/001,868, Requested Date: Jan. 24, 2012,
Cl.: 426/032, Title: COMPOSITION AND METHOD FOR TREATING IRON DEFICIENCY
ANEMIA, Inventor: Bala Venkataraman et al., Owners of Record: Alaven
Pharmaceutical, LLC., Marietta, GA; Colorado, Biolabs, Inc., Cozad, NE,
Attorney or Agent: Thompson Hine, LLP., Dayton, OH, Ex. Gp.: 3991,
Requester: Third Party Requester: WH Nutritionals, LLC.: (Att'y Is:
Steven Hultquist, Hultquist, IP, Research Triangle Park, NC), Real Party
in Interest: Same As Third Party Requester
7,712,796, Reexam. C.N.: 95/001,880, Requested Date: Feb. 1, 2012,
Cl.: 285/413, Title: DEFORMABLE MECHANICAL PIPE COUPLING, Inventor: John Gibb
et al., Owners of Record: Victaulic Company, Easton, PA, Attorney or Agent:
Ballard Spahr, LLP., Atlanta, GA, Ex. Gp.: 3993, Requester: Third Party
Requester: Anvil International, LLC.; (Att'y Is: Jeffrey R. Kuesler, Taylor
English Duma, LLP., Atlanta, GA), Real Party in Interest: Same As Third Party
Requester
| Notice of Expiration of Trademark Registrations Due to Failure to Renew |
Notice of Expiration of Trademark Registrations
Due to Failure to Renew
15 U.S.C. 1059 provides that each trademark registration may be
renewed for periods of ten years from the end of the expiring period
upon payment of the prescribed fee and the filing of an acceptable
application for renewal. This may be done at any time within one year
before the expiration of the period for which the registration was
issued or renewed, or it may be done within six months after such
expiration on payment of an additional fee.
According to the records of the Office, the trademark registrations
listed below are expired due to failure to renew in accordance with 15
U.S.C. 1059.
TRADEMARK REGISTRATIONS WHICH EXPIRED
February 17, 2012
DUE TO FAILURE TO RENEW
Reg. Number Serial Number Reg. Date
2,967,215 79/000,005 07/12/2005
2,967,217 79/000,038 07/12/2005
2,967,221 79/000,194 07/12/2005
2,967,222 79/000,195 07/12/2005
2,967,223 79/000,238 07/12/2005
2,967,225 79/000,253 07/12/2005
2,967,227 79/000,277 07/12/2005
2,967,228 79/000,320 07/12/2005
2,967,230 79/000,326 07/12/2005
2,967,231 79/000,346 07/12/2005
2,967,235 79/000,409 07/12/2005
1,160,674 73/219,489 07/14/1981
2,466,814 74/367,865 07/10/2001
2,468,046 74/601,908 07/10/2001
2,468,054 75/124,830 07/10/2001
2,468,068 75/292,118 07/10/2001
2,468,075 75/320,739 07/10/2001
2,468,096 75/387,172 07/10/2001
2,468,100 75/394,247 07/10/2001
2,466,849 75/395,912 07/10/2001
2,468,105 75/403,973 07/10/2001
2,466,856 75/431,508 07/10/2001
2,468,116 75/431,754 07/10/2001
2,468,120 75/438,769 07/10/2001
2,468,126 75/457,624 07/10/2001
2,466,859 75/460,099 07/10/2001
2,466,862 75/464,601 07/10/2001
2,468,135 75/469,628 07/10/2001
2,466,865 75/478,614 07/10/2001
2,468,145 75/484,649 07/10/2001
2,468,155 75/510,296 07/10/2001
2,468,161 75/524,966 07/10/2001
2,468,164 75/532,739 07/10/2001
2,466,899 75/561,268 07/10/2001
2,466,904 75/571,675 07/10/2001
2,466,907 75/572,969 07/10/2001
2,466,911 75/577,853 07/10/2001
2,468,202 75/584,998 07/10/2001
2,468,206 75/590,490 07/10/2001
2,468,208 75/592,533 07/10/2001
2,466,919 75/593,625 07/10/2001
2,466,922 75/596,844 07/10/2001
2,466,928 75/605,220 07/10/2001
2,468,232 75/616,538 07/10/2001
2,466,941 75/617,884 07/10/2001
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 82 |
2,466,942 75/619,473 07/10/2001
2,466,943 75/619,474 07/10/2001
2,468,239 75/621,121 07/10/2001
2,466,947 75/623,270 07/10/2001
2,466,948 75/623,809 07/10/2001
2,466,952 75/627,547 07/10/2001
2,466,953 75/628,252 07/10/2001
2,468,250 75/630,987 07/10/2001
2,466,956 75/633,228 07/10/2001
2,468,259 75/635,281 07/10/2001
2,466,965 75/642,894 07/10/2001
2,468,271 75/648,990 07/10/2001
2,466,970 75/650,466 07/10/2001
2,468,288 75/662,225 07/10/2001
2,466,985 75/665,306 07/10/2001
2,468,291 75/667,932 07/10/2001
2,466,994 75/676,533 07/10/2001
2,468,305 75/682,592 07/10/2001
2,468,309 75/685,820 07/10/2001
2,468,312 75/689,671 07/10/2001
2,467,003 75/691,936 07/10/2001
2,467,007 75/697,797 07/10/2001
2,467,008 75/697,846 07/10/2001
2,467,009 75/698,061 07/10/2001
2,467,010 75/698,208 07/10/2001
2,467,012 75/698,867 07/10/2001
2,468,563 75/709,626 07/10/2001
2,467,022 75/710,483 07/10/2001
2,467,023 75/711,664 07/10/2001
2,468,333 75/713,771 07/10/2001
2,467,033 75/719,181 07/10/2001
2,467,049 75/732,830 07/10/2001
2,468,357 75/742,321 07/10/2001
2,467,070 75/747,959 07/10/2001
2,467,074 75/749,359 07/10/2001
2,468,362 75/749,857 07/10/2001
2,467,081 75/755,951 07/10/2001
2,467,091 75/764,118 07/10/2001
2,467,095 75/768,096 07/10/2001
2,468,571 75/771,404 07/10/2001
2,467,109 75/778,816 07/10/2001
2,467,112 75/779,444 07/10/2001
2,467,118 75/781,222 07/10/2001
2,468,394 75/782,778 07/10/2001
2,468,395 75/783,185 07/10/2001
2,468,398 75/784,580 07/10/2001
2,467,133 75/788,199 07/10/2001
2,468,403 75/790,698 07/10/2001
2,467,137 75/790,727 07/10/2001
2,468,404 75/791,283 07/10/2001
2,467,141 75/794,680 07/10/2001
2,468,411 75/796,152 07/10/2001
2,468,413 75/797,165 07/10/2001
2,468,414 75/797,217 07/10/2001
2,467,158 75/805,624 07/10/2001
2,467,178 75/813,082 07/10/2001
2,467,183 75/814,154 07/10/2001
2,468,439 75/816,521 07/10/2001
2,467,200 75/820,870 07/10/2001
2,468,442 75/821,703 07/10/2001
2,468,446 75/825,474 07/10/2001
2,468,450 75/828,766 07/10/2001
2,468,456 75/832,257 07/10/2001
2,468,459 75/834,135 07/10/2001
2,468,460 75/834,628 07/10/2001
2,467,231 75/835,291 07/10/2001
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 83 |
2,467,235 75/836,396 07/10/2001
2,468,465 75/838,561 07/10/2001
2,468,468 75/839,985 07/10/2001
2,468,473 75/841,654 07/10/2001
2,467,255 75/847,242 07/10/2001
2,467,258 75/847,488 07/10/2001
2,467,261 75/848,517 07/10/2001
2,468,489 75/850,258 07/10/2001
2,467,270 75/853,419 07/10/2001
2,467,271 75/853,994 07/10/2001
2,468,492 75/854,867 07/10/2001
2,467,278 75/856,204 07/10/2001
2,467,284 75/859,074 07/10/2001
2,467,296 75/861,250 07/10/2001
2,467,305 75/862,793 07/10/2001
2,468,499 75/863,615 07/10/2001
2,467,320 75/868,976 07/10/2001
2,467,322 75/870,934 07/10/2001
2,468,506 75/872,467 07/10/2001
2,468,508 75/873,231 07/10/2001
2,467,331 75/873,974 07/10/2001
2,467,332 75/874,263 07/10/2001
2,468,577 75/875,713 07/10/2001
2,467,337 75/876,142 07/10/2001
2,468,579 75/876,695 07/10/2001
2,467,342 75/877,172 07/10/2001
2,467,346 75/877,928 07/10/2001
2,467,349 75/878,773 07/10/2001
2,467,361 75/881,501 07/10/2001
2,467,362 75/881,886 07/10/2001
2,467,365 75/882,219 07/10/2001
2,467,368 75/882,799 07/10/2001
2,467,375 75/883,830 07/10/2001
2,467,378 75/884,491 07/10/2001
2,467,392 75/887,912 07/10/2001
2,467,395 75/888,523 07/10/2001
2,467,412 75/894,436 07/10/2001
2,467,419 75/898,102 07/10/2001
2,467,420 75/898,552 07/10/2001
2,467,422 75/899,291 07/10/2001
2,468,521 75/901,966 07/10/2001
2,467,430 75/903,126 07/10/2001
2,468,523 75/904,506 07/10/2001
2,468,524 75/907,457 07/10/2001
2,467,441 75/912,284 07/10/2001
2,468,527 75/913,259 07/10/2001
2,468,528 75/914,675 07/10/2001
2,467,452 75/917,276 07/10/2001
2,467,459 75/920,840 07/10/2001
2,468,587 75/925,846 07/10/2001
2,468,588 75/926,447 07/10/2001
2,467,489 75/931,250 07/10/2001
2,467,502 75/939,649 07/10/2001
2,467,506 75/942,489 07/10/2001
2,467,511 75/943,598 07/10/2001
2,468,536 75/945,004 07/10/2001
2,468,538 75/979,709 07/10/2001
2,467,518 76/001,635 07/10/2001
2,467,525 76/004,317 07/10/2001
2,467,537 76/007,532 07/10/2001
2,467,545 76/010,979 07/10/2001
2,468,599 76/011,750 07/10/2001
2,467,549 76/012,367 07/10/2001
2,467,555 76/014,090 07/10/2001
2,467,567 76/018,299 07/10/2001
2,467,580 76/022,575 07/10/2001
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 84 |
2,467,581 76/023,151 07/10/2001
2,467,583 76/024,472 07/10/2001
2,468,605 76/026,350 07/10/2001
2,467,600 76/029,888 07/10/2001
2,467,611 76/032,577 07/10/2001
2,467,615 76/033,081 07/10/2001
2,467,623 76/034,021 07/10/2001
2,467,624 76/034,024 07/10/2001
2,467,626 76/034,841 07/10/2001
2,467,638 76/037,989 07/10/2001
2,467,648 76/040,405 07/10/2001
2,467,649 76/040,468 07/10/2001
2,467,660 76/043,742 07/10/2001
2,467,677 76/047,269 07/10/2001
2,467,686 76/049,438 07/10/2001
2,467,687 76/049,851 07/10/2001
2,467,689 76/049,968 07/10/2001
2,467,691 76/051,098 07/10/2001
2,467,693 76/051,356 07/10/2001
2,467,703 76/052,984 07/10/2001
2,467,704 76/053,192 07/10/2001
2,467,713 76/054,488 07/10/2001
2,467,716 76/054,598 07/10/2001
2,467,717 76/054,602 07/10/2001
2,467,729 76/057,902 07/10/2001
2,467,737 76/059,532 07/10/2001
2,467,742 76/060,120 07/10/2001
2,467,746 76/060,573 07/10/2001
2,467,779 76/067,273 07/10/2001
2,467,781 76/067,352 07/10/2001
2,467,787 76/068,592 07/10/2001
2,467,794 76/070,061 07/10/2001
2,467,798 76/070,285 07/10/2001
2,467,803 76/070,880 07/10/2001
2,467,809 76/072,343 07/10/2001
2,467,811 76/072,840 07/10/2001
2,467,814 76/073,268 07/10/2001
2,467,818 76/073,776 07/10/2001
2,467,825 76/074,930 07/10/2001
2,467,835 76/076,554 07/10/2001
2,467,843 76/077,887 07/10/2001
2,467,853 76/079,223 07/10/2001
2,467,857 76/079,441 07/10/2001
2,467,864 76/080,713 07/10/2001
2,467,870 76/082,210 07/10/2001
2,467,890 76/086,227 07/10/2001
2,467,904 76/087,194 07/10/2001
2,467,906 76/087,401 07/10/2001
2,467,911 76/087,969 07/10/2001
2,467,914 76/088,141 07/10/2001
2,467,921 76/088,801 07/10/2001
2,467,939 76/090,772 07/10/2001
2,467,952 76/091,994 07/10/2001
2,467,972 76/094,416 07/10/2001
2,467,977 76/096,477 07/10/2001
2,467,981 76/097,314 07/10/2001
2,467,989 76/098,622 07/10/2001
2,468,001 76/100,275 07/10/2001
2,468,002 76/100,785 07/10/2001
2,468,005 76/101,217 07/10/2001
2,468,007 76/101,219 07/10/2001
2,468,008 76/101,221 07/10/2001
2,468,010 76/101,659 07/10/2001
2,468,012 76/101,949 07/10/2001
2,468,033 78/005,182 07/10/2001
2,468,043 78/022,321 07/10/2001
Service by Publication
A notice of opposition to the registration of the mark in the application
identified below having been filed, and the notice of such proceeding sent to
applicant at the last known address having been returned by the Postal Service
as undeliverable, notice is hereby given that unless the applicant listed
herein, its assigns or legal representatives, shall enter an appearance within
thirty days of this publication, the opposition will proceed as in the case of
default.
Alvaro Santoscoy Padilla, Quadalajara, Mexico, Application Serial No.
85214774 for the mark "BILLY JACK", Opposition No. 91201683.
NICOLE M. THIER
Paralegal Specialist
Trademark Trial and Appeal Board, for
DEBORAH S. COHN
Commissioner for Trademarks
Service by Publication
A petition to cancel the registration identified below having been filed,
and the notice of such proceeding sent to registrant at the last known address
having been returned by the Postal Service as undeliverable, notice is hereby
given that unless the registrant listed herein, its assigns or legal
representatives, shall enter an appearance within thirty days of this
publication, the cancellation will proceed as in the case of default.
Cyphermint Inc., Marlborough, MA, Registration No. 3343868 for the mark
"PAYCASH", Cancellation No. 92054893.
MILLICENT CANADY
Paralegal Specialist
Trademark Trial and Appeal Board, for
DEBORAH S. COHN
Commissioner for Trademarks
Service by Publication
A petition to cancel the registration identified below having been filed,
and the notice of such proceeding sent to registrant at the last known address
having been returned by the Postal Service as undeliverable, notice is hereby
given that unless the registrant listed herein, its assigns or legal
representatives, shall enter an appearance within thirty days of this
publication, the cancellation will proceed as in the case of default.
Robert Malta, New York, NY, Registration No. 4044144 for the mark
"PUTTANESCA", Cancellation No. 92055034.
KARL KOCHERSPERGER
Paralegal Specialist
Trademark Trial and Appeal Board, for
DEBORAH S. COHN
Commissioner for Trademarks
| 37 CFR 1.47 Notice by Publication |
37 CFR 1.47 Notice of Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of all the inventors. The petition has been granted. A notice has
been sent to the last known address of the non-signing inventor, Jorge
Vincente BLASCO CLARET. The inventor whose signature is missing may join in
the application by promptly filing an appropriate oath or declaration
complying with 37 CFR 1.63. The international application number is
PCT/ES2009/070273 and was filed 03 July 2009 in the names of Jorge Vincente
BLASCO CLARET, Salvador IRANZO MOLINERO, Agustin BADENES CORELLA, Jose Luis
GONZALEZ MORENO, and Luis Manuel TORRES CANTON for the invention entitled
MULTI-BAND DATA TRANSMISSION METHOD. The national stage number is 13/054,024
and has a 35 U.S.C. 371(c) date of 29 November 2011.
37 CFR 1.47 Notice of Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of all the inventors. The petition has been granted. A notice has
been sent to the last known address of the non-signing inventor. The inventor
whose signature is missing (Toby Proctor) may join in the application by
promptly filing an appropriate oath or declaration complying with 37 CFR 1.63.
The international application number is PCT/EP2009/053733 and was filed 30
March 2009 in the names of Roger Beck and Toby Proctor for the invention
entitled CONFIGURATION OF ACCESS POINTS IN A TELECOMMUNICATION NETWORK. The
national stage number is 12/736,336 and has a 35 U.S.C. 371(c) date of 22
April 2011.
| 37 CFR § 1.47 Notice by Publication |
37 CFR § 1.47 Notice by Publication
Notice is hereby given of the filing of the following applications with a
petition under 37 CFR § 1.47 requesting the acceptance of the application
without the signature of all inventors or, if the inventor is deceased, the
legal representative of the deceased inventor. The petition in each
application has been granted. A notice has been sent to the last known address
of the non-signing inventor or legal representative. The inventors or legal
representatives whose signatures are missing may join in the application by
promptly filing an oath or declaration complying with 37 CFR § 1.63.
Non-Signing
Inventor(s)
Application or Legal
No. Filing Date Representative(s) Title of Invention
29/373,153 Mar. 7, 2011 Luca Borgogno Automobile With Automobile
Body Having Visible
Carbon Fibre
29/390,338 Apr. 22, 2011 Terence Sean Yoo Seat Portio
10/811,397 Mar. 25, 2004 Curtis R. Priem Unified Driver
Architecture Device
Identifier Strategy
10/889,765 Jul. 13, 2004 David Jarman Vegetation Pruning Device
11/234,726 Sep. 23, 2005 Stephen Mead Memory Management Method
And Apparatus For
Automated Biological
Reaction System
12/191,466 Aug. 14, 2008 David Jarman Vegetation Pruning Device
12/196,557 Aug. 22, 2008 Yih-Sien Kao User Group Assignment
Method For Key
Management
12/298,937 Oct. 29, 2008 Stephen Scheufele Sample Collection System
And Method
12/475,273 May 29, 2009 Ryota Kuki Dielectric Ceramic And
Capacitor
12/510,502 Jul. 28, 2009 John P. Wallner Active Head Restraint
For A Vehicle Seat
12/614,314 Nov. 6, 2009 Mirimajid Seyyedy Hybrid MRAR Array
Structure And Operation
12/757,279 Apr. 9, 2010 Satish Laxmanrao Managing Access Commands
Rege By Multiple Level
Caching
12/789,311 May 27, 2010 Jiwoong Lee Recursive Header
Compression For
Relay Nodes
12/806,208 Sep. 2, 2009 Mo-Han Fong Differential Encoding
With Adaptive Resetting
12/915,709 Oct. 29, 2010 Oxana Guerassimenko Therapeutic Approaches
For Treating Alzheimer
Disease And Related
Disorders Through A
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
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Modulation Of Angiogenesis
12/967,506 Dec. 14, 2010 Chien-Sheng Yang Thin Film Solar Cell And
Thin Film Solar Cell
System
12/978,359 Dec. 23, 2010 Seongiun Park Semiconductor Device
Contacts
12/980,223 Dec. 28, 2010 Samuel M. Khamis Hybrid Sensor Array
13/005,613 Jan. 13, 2011 Timo Ahopelto Conversion Management
System Method And
Computer Program
13/012,557 Jan. 24, 2011 Eui-Joon Youm Interactive Asynchronous
Game Play Architecture
13/014,327 Jan. 26, 2011 Murray J. Burke Method And Apparatus For
Sunalie N. Hillier Treating A Cellulosic
Feedstock
13/021,263 Feb. 4, 2011 Andreas Kopnick Fitting For A Corner
Cupboard And A Corner
Cupboard
13/035,933 Feb. 26, 2011 Luis E. Arroyo Integrated Portable
Checkpoint System
13/038,570 Mar. 2, 2011 Bruce Cloutier Systems And Methods For
Detection Mechanisms For
Magnetic Cards And Devices
13/047,541 Mar. 14, 2011 Jerome Shimizu Methods And Apparatus For
Integrating Volume Metric
Sales Data, Media
Consumption Information,
And Geographic-
Demographic Data To
Target Advertisements
13/050,931 Mar. 17, 2011 Laurent Olivier Method And System For
Processing Of Aquatic
Species
13/068,556 May 13, 2011 Elizabeth A. Brooks User Interface Enabling
Value Analysis Of
Different Products
Or Services
13/069,354 Mar. 22, 2011 Lawrence Mosca Bone Plate System
13/077,594 Mar. 31, 2011 Hyunchul Ko System And Method For
Color Mixing Lens Array
13/089,123 Apr. 18, 2011 Minwen Ji Host Selection For
Virtual Machine Placement
13/092,823 Apr. 22, 2011 Leland Shapiro Methods And Compositions
For Islet Cell Preservation
13/092,825 Apr. 22, 2011 Leland Shapiro Methods And Compositions
For Treatment Of Graft
Rejection And Promotion
Of Graft Survival
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 89 |
13/104,378 May 10, 2011 Christian Cojocaru Systems And Methods For
Tudor Lipan Controlling Local
Oscillator Feed-Through
13/104,900 May 10, 2011 Xiaogen Feng Process For Preparing
Xiaohui Mao 4-Aminodiphenylamine
Nongyue Wang
Ruibiao Yu
13/106,180 May 12, 2011 James A. O'Neil System And Method For
Cryogenic Cooling
13/136,339 Jul. 29, 2011 Charles Larue Method And Apparatus For
Bryant, Jr. Cutting And Removing
Pipe From A Well
13/165,631 Jun. 21, 2011 Sandeep Yadav Deduplication In An
Extent-Based Architecture
13/183,921 Jul. 15, 2011 Peter Porshnev Methods And Apparatus For
Controlling Power
Distribution In Substrate
Processing Systems
13/187,297 Jul. 20, 2011 Alexei Savtchenko Activation And Monitoring
Of Cellular Transmembrane
Potentials
13/188,029 Jul. 21, 2011 Paul Prior Light Engine Device With
Direct To Linear System
Driver
13/192,458 Jul. 27, 2011 Dani Essindi Generating A Conversation
In A Social Network Based
On Visual Search Results
13/193,492 Jul. 28, 2011 Lu Chen Detecting Defects On A
Wafer
13/199,719 Sep. 7, 2011 Robert Owen White Thick Laminate
Manufacturing
Apparatus And Method
13/199,720 Sep. 7, 2011 Robert Owen White Tip Jet Attachment
Apparatus And Method
13/216,950 Aug. 24, 2011 Mark H.A. Tigges Detail-In-Context Terrain
Displacement Algorithm With
Optimizations
13/222,980 Aug. 31, 2011 Rong-Chung Liang Methods And Compositions
For Improved
Electrophoretic Display
Performance
13/225,266 Sep. 2, 2011 Nigel Dunn-Coleman Polypeptides Having
Alpha-Amylase And Granular
Starch Hydrolyzing Activity
13/239,771 Sep. 22, 2011 Dr. Luis C. S. Constructs For Enhancing
Ferreira Immune Responses
13/284,394 Oct. 28, 2011 Keith Carl Trares Tire Having Modular Ply
Construction And
Method Of Making Same
Registrattion to Practice
The following list contains the names of persons seeking for registration
to practice before the United States Patent and Trademark Office. Final
approval for registration is subject to establishing to the satisfaction of
the Director of the Office of Enrollment and Discipline that the person
seeking registration is of good moral character and repute. 37 CFR § 11.7
Accordingly, any information tending to affect the eligibility of any of the
following persons on moral ethical or other grounds should be furnished to
the Director of Enrollment and Discipline on or before April 2, 2012 at the
following address: Mail Stop OED United States Patent and Trademark Office
P.O. Box 1450 Alexandria VA 22314
Aliasgharpour, Sina, 11740 Wilshire Boulevard, Apartment #A2407, Los Angeles,
CA 90025
Cate, Andrew Earl, 1785 Hayes Street, San Francisco, CA 94117
Chang, Clifford Shawn, 100 S. Alameda Street, #278, Los Angeles, CA 90012
Cotton, Stephen Joshua, 668 Alameda de Las Pulgas, San Carlos, CA 94070
Georgas, Bobae Kim, 2666 S Forrest Green Drive, Decatur, IL 62521
German, Jason Randall, Baker Botts, L.L.P., 620 Hansen Way, Palo Alto,
CA 94304
Goyea, Olusegun Olaitan, United States Patent and Trademark Office, 600
Dulany Street, Alexandria, VA 22314
Gutenberg, Peter, 8398 New Salem Street, Unit #14, San Diego, CA 92126
Hodges, Benjamin James, Senniger Powers LLP, 100 N Broadway, 17th Floor,
Saint Louis, MO 63102
Hwang, Won Suk, 3949 Persimmon Drive, Apartment #101, Fairfax, VA 22031
Kim, David Dongsuk, 5925 Pebblestone Lane, Plano, TX 75093
Kim, Minjung, 10 Cyril Magnin Street #706, San Francisco, CA 94102
Koo, Young Seok, Ladas & Parry LLP, 5670 Wilshire Boulevard, Suite 2100,
Los Angeles, CA 90036
Martin, John Conrad, 7808 Belleflower Drive, Springfield, VA 22152
Mihalkanin, Danielle Marie, Baker Botts, LLP, 620 Hansen Way, Palo Alto,
CA 94304
Momeyer, Brian Lee, Qualcomm Inc., 5775 Morehouse Drive, San Diego, CA 92121
Ohanyerenwa, Chiedo Raymond, 4906 First Street NW, Washington, DC 20011
Shewmake, Thomas Arthur, 9270 N. 99th Way, Scottsdale, AZ 85258
Shibaike, Yumiko, Morrison & Foerster LLP, 1650 Tyson Boulevard, Suite 400,
McLean, VA 22102-4220
Sinha, Rita Kumari, Toyota Motor Corporation, c/o De Novo Legal, 2140
Duckhorn Court, Waldorf, MD 20601
Veeraraghavan, Sriranga Raghavan, Tessera Incorporated, 3025 Orchard Parkway,
San Jose, CA 95134
Yamaguchi, Maki, Taiyo, Nakajima & Kato, 401 Holland Lane, Suite 407,
Alexandria, VA 22314
You, Wansik, Hershkovitz & Associates, LLC, 2845 Duke Street, Alexandria,
VA 22314
Zivojnovic, Ognjen, Ropes & Gray LLP, Office #6/13, 1900 University Avenue,
East Palo Alto, CA 94303
February 16, 2012 WILLIAM J. GRIFFIN
Acting Director of Enrollment and Discipline
Notice of Exclusion
This concerns David E. Fox of Washington, D.C., an attorney licensed by
the state of Maryland and the District of Columbia who is not a registered
practitioner and who is not authorized to practice patent law before the
United States Patent and Trademark Office ("USPTO"). In a reciprocal
disciplinary proceeding, the USPTO Director has ordered that Mr. Fox be
excluded from the practice of trademark and non-patent law before the USPTO
for violating 37 C.F.R. § 10.23(b)(6) via 37 C.F.R. § 10.23(c)(5)(i) by being
disbarred on ethical grounds from the practice of law in the State of
Maryland.
The Court of Appeals of Maryland issued an order, dated December 20, 2010,
disbarring Mr. Fox for neglecting a client matter, making a misrepresentation
to a client, settling a matter without consulting with the client, and
failing to cooperate with the office of Bar Counsel. The Court of Appeals of
Maryland disbarred Mr. Fox after he was found to have violated Maryland
Lawyer's Rules of Professional Conduct 1.1, 1.2(a), 1.3, 1.4(a) and (b),
1.16(d), 8.1(b) and 8.4(a) and (c).
This action is taken pursuant to the provisions of 35 U.S.C. §§ 2(b)(2)(D)
and 32, and 37 C.F.R. §§ 11.24 and 11.59. Disciplinary decisions involving
practitioners are posted for public reading at the Office of Enrollment and
Discipline's Reading Room located at:
http://des.uspto.gov/Foia/OEDReadingRoom.jsp.
February 14, 2012 JAMES O. PAYNE
Deputy General Counsel for General Law
United States Patent and Trademark Office
on behalf of
DAVID KAPPOS
Under Secretary of Commerce For Intellectual Property and
Director of the United States Patent and Trademark Office
| Notice of Exclusion on Consent |
Notice of Exclusion on Consent
This notice concerns Wesley B. Ames, registered patent practitioner
(Registration No. 40,893). Pursuant to 37 C.F.R. § 11.27(b), the Director of
the United States Patent and Trademark Office ("USPTO" or "Office") has
accepted Mr. Ames' affidavit of resignation, prepared pursuant to 37 C.F.R.
§ 11.27(b), and ordered his exclusion on consent from the practice of patent,
trademark, and non-patent law before Office.
Mr. Ames voluntarily submitted his affidavit at a time when a disciplinary
complaint was pending against him. He acknowledged that the Deputy General
Counsel for Enrollment and Discipline and Director of the USPTO's Office of
Enrollment and Discipline ("OED Director") was of the opinion that his
conduct violated 37 C.F.R. §§ 10.23(a) via 10.23(c)(3), 10.23(b)(6) via
10.23(c)(8), 10.77(c), 10.84(a)(1), 10.84(a)(2), and 10.89(c)(6) in
connection with his representation of two clients before the Office. While
Mr. Ames did not admit to violating any of the Disciplinary Rules of the
USPTO Code of Professional Responsibility as alleged in the pending
disciplinary complaint, he acknowledged that, if and when he applies for
reinstatement, the OED Director will conclusively presume, for the limited
purpose of determining the application for reinstatement, that (i) the
allegations set forth in the disciplinary complaint against him are true and
(ii) he could not have successfully defended himself against such allegations.
This action is taken pursuant to the provisions of 35 U.S.C. §§ 2(b)(2)(D)
and 32, and 37 C.F.R. §§ 11.27 and 11.59. Disciplinary decisions involving
practitioners are posted for public reading at the Office of Enrollment and
Discipline Reading Room located at:
http://des.uspto.gov/Foia/OEDReadingRoom.jsp.
February 14, 2012 JAMES O. PAYNE
Deputy General Counsel for General Law
United States Patent and Trademark Office
on behalf of
DAVID M. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
Notice of Exclusion on Consent
This notice concerns David Burkenroad, of Los Angeles, California, an
attorney admitted to practice law in California, who is not registered to
practice before the United States Patent and Trademark Office ("USPTO" or
"Office") in patent matters. Pursuant to 37 C.F.R. § 11.27(b), the USPTO
Director has accepted Mr. Burkenroad's affidavit of resignation, prepared
pursuant to 37 C.F.R. § 11.27(a), and ordered his exclusion on consent from
the practice of trademark and other non-patent law before Office.
Mr. Burkenroad is not registered to practice in patent matters before the
Office. See 37 C.F.R. § 11.5.
Mr. Burkenroad voluntarily submitted his affidavit at a time when he was
subject to a disciplinary investigation pursuant to 37 C.F.R. § 11.22(a).
Mr. Burkenroad acknowledged that the Deputy General Counsel for Enrollment
and Discipline and Director of the USPTO's Office of Enrollment and
Discipline ("OED Director") was of the opinion that his conduct violated
37 C.F.R. §§ 10.23(a) and (b) via 37 C.F.R. § 10.23(c)(5) by being disbarred
on ethical grounds by the State Bar of California from the practice of law in
California, effective April 23, 2011. While Mr. Burkenroad did not admit to
violating any of the Disciplinary Rules of the USPTO Code of Professional
Responsibility referenced in a letter of investigation, he acknowledged that,
if and when he applies for reinstatement, the OED Director will conclusively
presume, for the limited purpose of determining the application for
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 93 |
reinstatement, that (i) the allegations set forth in the disciplinary
complaint are true and (ii) Mr. Burkenroad could not have successfully
defended himself against such allegations.
This action is taken pursuant to the provisions of 35 U.S.C. §§ 2(b)(2)(D)
and 32, and 37 C.F.R. §§ 11.27 and 11.59. Disciplinary decisions involving
practitioners are posted for public reading at the Office of Enrollment and
Discipline Reading Room located at:
http://des.uspto.gov/Foia/OEDReadingRoom.jsp.
February 14, 2012 JAMES O. PAYNE
Deputy General Counsel for General Law
United States Patent and Trademark Office
on behalf of
DAVID M. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
Notice of Reprimand
This notice concerns Francis L. Kubler of Miami, Florida, a registered
patent attorney (Registration Number 32,738). The United States Patent and
Trademark Office has reprimanded Mr. Kubler for having violated 37 C.F.R.
§ 10.77(c) by neglecting to communicate adequately with certain clients about
certain aspects of patent legal matters entrusted to him.
Mr. Kubler acknowledges that, between 2007 and 2009, he and his office
lacked a uniform system of client notification and reply to client inquiries
that resulted in inconsistent client communications practices and some
communications delay. Consequently, in connection with the representation of
certain clients before the Office during that time, he did not always
communicate adequately, and specifically promptly, with the clients about
aspects of the patent legal matters entrusted to him. Mr. Kubler acknowledges
that prompt and complete communication with his clients is a vital component
of the practitioner-client relationship. Mr. Kubler has taken remedial action
in connection with his client communications and related office management
skills. He also has taken continuing legal education to improve his client
communications and related office management skills.
This action is the result of a settlement agreement between Mr. Kubler and
the OED Director pursuant to the provisions of 35 U.S.C. § 2(b)(2)(D) and 37
C.F.R. §§ 11.26 and 11.59. Disciplinary decisions involving practitioners are
posted at the Office of Enrollment and Discipline's Reading Room located at:
http://des.uspto.gov/Foia/OEDReadingRoom.jsp.
February 15, 2012 JAMES O. PAYNE
Deputy General Counsel for General Law
United States Patent and Trademark Office
on behalf of
DAVID M. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
| Notice of Public Reprimand and Probation |
Notice of Public Reprimand and Probation
This notice concerns Olga A. Karasik of Los Angeles, California, an
attorney licensed in California and authorized to represent others before
the United States Patent and Trademark Office ("USPTO") in trademark and
non-patent matters. Ms. Karasik has been publicly reprimanded and placed on
probation for three years by the USPTO for violating 37 C.F.R. § 10.23(b)(6)
when she was suspended on ethical grounds by the Supreme Court of California.
Ms. Karasik will be permitted to practice in trademark and non-patent matters
before the USPTO during her probationary period provided that she otherwise
satisfies the conditions of 37 C.F.R. § 11.14(a) and unless subsequently
suspended by order of the USPTO Director. Ms. Karasik is not a registered
patent practitioner and is not authorized to practice patent law before the
USPTO.
The California Supreme Court suspended Ms. Karasik for two years with the
entire suspension stayed and placed Ms. Karasik on probation for three years
for violating California Rule of Professional Conduct 3-310(E)(2). The
suspension was predicated on Ms. Karasik accepting representation of more
than one client in a matter in which the interests of the clients actually
conflicted without the informed written consent of each client.
This action is the result of a settlement agreement between Ms. Karasik
and the OED Director pursuant to 35 U.S.C. §§ 2(b)(2)(D) and 37 C.F.R.
§§ 11.20, 11.26, and 11.59. Disciplinary decisions involving practitioners
are posted for public reading at the Office of Enrollment and Discipline's
Reading Room located at: http://des.uspto.gov/Foia/OEDReadingRoom.jsp
February 15, 2012 JAMES O. PAYNE
Deputy General Counsel for General Law
United States Patent and Trademark Office
on behalf of
DAVID M. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
Notice of Suspension
This concerns James O. Okorafor, of Houston, Texas, a registered patent
attorney, registration number 34,525. In a disciplinary proceeding, the
Director of the United States Patent and Trademark Office has ordered
Mr. Okorafor be suspended from the practice before the United States Patent
and Trademark Office in patent, trademark and other non-patent law cases for
violating 37 C.F.R. §§ 10.23(a) and (b) via 37 C.F.R. § 23(c)(5) by being
suspended for two years from the practice of law in the State of Texas for
misconduct that was deceitful, dishonest, and constituted misrepresentations
to a third party.
This action is taken pursuant to the provisions of 35 U.S.C. § 32, and
37 C.F.R. § 11.24. Disciplinary decisions involving practitioners are posted
for public reading at the Office of Enrollment and Discipline's Reading Room
located at: http://des.uspto.gov/Foia/OEDReadingRoom.jsp.
February 15, 2012 JAMES O. PAYNE
Deputy General Counsel for General Law
United States Patent and Trademark Office
on behalf of
DAVID M. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
Notice of Suspension
This concerns Ben E. Lofstedt of Fullerton, California, a registered
patent attorney (Registration Number 25,998) admitted to practice law in the
State of California. In a reciprocal disciplinary proceeding, Mr. Lofstedt
has been suspended for two years from the practice of patent, trademark, and
other non-patent law before the United States Patent and Trademark Office
("USPTO") for violating 37 C.F.R. § 10.23(b)(6) via 37 C.F.R.
§ 10.23(c)(5)(i) when he was suspended on ethical grounds from the practice
of law in the State of California and has been placed on a two year
probation. After completing thirty days of his suspension, Mr. Lofstedt may
seek reinstatement pursuant to 37 C.F.R. § 11.60. After being reinstated,
Mr. Lofstedt will be permitted to practice patent law before the USPTO during
his probationary period, and trademark and non-patent law provided he
satisfies 37 C.F.R. §§ 11.14(a), unless a stay of the suspension is lifted by
order of the USPTO Director.
The Supreme Court of California suspended Mr. Lofstedt in connection with
two client matters. In the first matter, he failed to file an Offer of
Compromise with the Internal Revenue Service on behalf of his clients, failed
to perform legal services competently, and failed to adequately communicate
with his clients. In the second matter, Mr. Lofstedt failed to provide an
accounting to a receiver as ordered by the court in the client's marital
dissolution and delayed approximately sixteen months before providing an
accounting to counsel for the client's ex-husband.
This action is taken pursuant to the provisions of 35 U.S.C. §§ 2(b)(2)(D)
and 32, and 37 C.F.R. §§ 11.24 and 11.59. Disciplinary decisions involving
practitioners are posted for public reading at the Office of Enrollment and
Discipline's Reading Room located at:
http://des.uspto.gov/Foia/OEDReadingRoom.jsp.
February 16, 2012 JAMES O. PAYNE
Deputy General Counsel for General Law
United States Patent and Trademark Office
on behalf of
DAVID M. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
| Changes to Implement Inter Partes Review Proceedings |
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 42
[Docket No. PTO-P-2011-0083]
RIN 0651-AC71
Changes to Implement Inter Partes Review Proceedings
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office or
USPTO) proposes new rules to implement the provisions of the Leahy-
Smith America Invents Act that create a new inter partes review
proceeding to be conducted before the Patent Trial and Appeal Board
(Board). These provisions of the Leahy-Smith America Invents Act will
take effect on September 16, 2012, one year after the date of
enactment, and apply to any patent issued before, on, or after the
effective date.
DATES: The Office solicits comments from the public on this proposed
rulemaking. Written comments must be received on or before April 10,
2012 to ensure consideration.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: inter_partes_review@uspto.gov. Comments may
also be submitted by postal mail addressed to: Mail Stop Patent Board,
Director of the United States Patent and Trademark Office, P.O. Box
1450, Alexandria, VA 22313-1450, marked to the attention of "Lead
Judge Michael Tierney, Inter partes Review Proposed Rules."
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov/) for additional
instructions on providing comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments are preferred to be submitted in
plain text, but also may be submitted in ADOBE® portable
document format or MICROSOFT WORD® format. Comments not
submitted electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE® portable
document format.
The comments will be available for public inspection at the Board
of Patent Appeals and Interferences, currently located in Madison East,
Ninth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also
will be available for viewing via the Office's Internet Web site
(http://www.uspto.gov/). Because comments will be made available for
public inspection, information that the submitter does not desire to
make public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Michael Tierney, Lead Administrative
Patent Judge, Scott Boalick, Lead Administrative Patent Judge, Robert
Clarke, Administrative Patent Judge, and Lynn Kryza, Senior
Administrator, Board of Patent Appeals and Interferences, by telephone
at (571) 272-9797.
SUPPLEMENTARY INFORMATION: On September 16, 2011, the Leahy-Smith
America Invents Act was enacted into law (Pub. L. 112-29, 125 Stat. 284
(2011)). The purpose of the Leahy-Smith America Invents Act and these
proposed regulations is to establish a more efficient and streamlined
patent system that will improve patent quality and limit unnecessary
and counterproductive litigation costs. The preamble of this notice
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sets forth in detail the procedures by which the Board will conduct
inter partes review proceedings. The USPTO is engaged in a transparent
process to create a timely, cost-effective alternative to litigation.
Moreover, the rulemaking process is designed to ensure the integrity of
the trial procedures. See 35 U.S.C. 316(b), as amended. The proposed
rules would provide a set of rules relating to Board trial practice for
inter partes review.
Section 6 of the Leahy-Smith America Invents Act is entitled
"POST-GRANT REVIEW PROCEEDINGS" (Pub. L. 112-29, 125 Stat. 284, 299-
305 (2011)). Section 6(a) of the Leahy-Smith America Invents Act,
entitled "INTER PARTES REVIEW," amends chapter 31 of title 35, United
States Code, also entitled "INTER PARTES REVIEW." In particular,
section 6(a) of the Leahy-Smith America Invents Act amends 35 U.S.C.
311-318 and adds 35 U.S.C. 319.
Section 6(a) of the Leahy-Smith America Invents Act amends 35
U.S.C. 311, entitled "Inter partes review." 35 U.S.C. 311(a), as
amended, will provide that, subject to the provisions of chapter 31 of
title 35, United States Code, a person who is not the owner of a patent
may file a petition with the Office to institute an inter partes review
of the patent. 35 U.S.C. 311(a), as amended, will also provide that the
Director will establish, by regulation, fees to be paid by the person
requesting the review, in such amounts as the Director determines to be
reasonable, considering the aggregate costs of the review. 35 U.S.C.
311(b), as amended, will provide that a petitioner in an inter partes
review may request to cancel as unpatentable one or more claims of a
patent only on a ground that could be raised under 35 U.S.C. 102 or 103
and only on the basis of prior art consisting of patents or printed
publications. 35 U.S.C. 311(c), as amended, will provide that a
petition for inter partes review may be filed after the later of
either: (1) the date that is nine months after the grant of a patent or
issuance of a reissue of a patent; or (2) if a post-grant review is
instituted under chapter 32 of title 35, United States Code, the date
of the termination of that post-grant review.
The grounds for seeking an inter partes review will be limited
compared with post-grant review. The grounds for seeking inter partes
review are limited to issues raised under 35 U.S.C. 102 or 103 and only
on the basis of prior art consisting of patents or printed
publications. In contrast, the grounds for seeking post-grant review
include any ground that could be raised under 35 U.S.C. 282(b)(2) or
(3). Such grounds for post-grant review include grounds that could be
raised under 35 U.S.C. 102 or 103 including those based on prior
art consisting of patents or printed publications. Other grounds
available for post-grant review include 35 U.S.C. 101 and 112, with the
exception of compliance with the best mode requirement.
Section 6(a) of the Leahy-Smith America Invents Act amends 35
U.S.C. 312, entitled "Petitions." 35 U.S.C. 312(a), as amended, will
provide that a petition filed under 35 U.S.C. 311, as amended, may be
considered only if certain conditions are met. First, the petition must
be accompanied by payment of the fee established by the Director under
35 U.S.C. 311, as amended. Second, the petition must identify all real
parties in interest. Third, the petition must identify, in writing and
with particularity, each claim challenged, the grounds on which the
challenge to each claim is based, and the evidence that supports the
grounds for the challenge to each claim, including: (A) Copies of
patents and printed publications that the petitioner relies upon in
support of the petition and (B) affidavits or declarations of
supporting evidence and opinions, if the petitioner relies on expert
opinions. Fourth, the petition must provide such other information as
the Director may require by regulation. Fifth, the petitioner must
provide copies of any of the documents required under paragraphs (2),
(3), and (4) of 35 U.S.C. 312(a) to the patent owner or, if applicable,
the designated representative of the patent owner. 35 U.S.C. 312(b), as
amended, will provide that, as soon as practicable after the receipt of
a petition under 35 U.S.C. 311, as amended, the Director will make the
petition available to the public.
Section 6(a) of the Leahy-Smith America Invents Act amends 35
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U.S.C. 313, entitled "Preliminary response to petition." 35 U.S.C.
313, as amended, will provide that, if an inter partes review petition
is filed under 35 U.S.C. 311, as amended, within a time period set by
the Director, the patent owner has the right to file a preliminary
response to the petition that sets forth reasons why no inter partes
review should be instituted based upon the failure of the petition to
meet any requirement of chapter 31 of title 35, United States Code.
Section 6(a) of the Leahy-Smith America Invents Act amends 35
U.S.C. 314, entitled "Institution of inter partes review." 35 U.S.C.
314(a), as amended, will provide that the Director may not authorize an
inter partes review to be instituted, unless the Director determines
that the information presented in the petition filed under 35 U.S.C.
311 and any response filed under 35 U.S.C. 313 shows that there is a
reasonable likelihood that the petitioner would prevail with respect to
at least one of the claims challenged in the petition. 35 U.S.C.
314(b), as amended, will provide that the Director will determine
whether to institute an inter partes review under chapter 31 of title
35, United States Code, pursuant to a petition filed under 35 U.S.C.
311, as amended, within three months after: (1) Receiving a preliminary
response to the petition under 35 U.S.C. 313, as amended; or (2) if no
such preliminary response is filed, the last date on which such
response may be filed. 35 U.S.C. 314(c), as amended, will provide that
the Director will notify the petitioner and patent owner, in writing,
of the Director's determination under 35 U.S.C. 314(a), and will make
the notice available to the public as soon as is practicable. 35 U.S.C.
314(c), as amended, will also provide that the notice will include the
date on which the review will commence. 35 U.S.C. 314(d), as amended,
will provide that the determination by the Director whether to
institute an inter partes review under 35 U.S.C. 314 will be final and
nonappealable.
Section 6(a) of the Leahy-Smith America Invents Act amends 35
U.S.C. 315, entitled "Relation to other proceedings or actions." 35
U.S.C. 315(a)(1), as amended, will provide that an inter partes review
may not be instituted if, before the date on which the petition for
review is filed, the petitioner or real party in interest filed a civil
action challenging the validity of a claim of the patent. 35 U.S.C.
315(a)(2), as amended, will provide for an automatic stay of a civil
action brought by the petitioner or real party in interest challenging
the validity of a claim of the patent and filed on or after the date on
which the petition for inter partes review was filed, until certain
specified conditions are met. 35 U.S.C. 315(a)(3), as amended, will
provide that a counterclaim challenging the validity of a claim of a
patent does not constitute a civil action challenging the validity of a
claim of a patent for purposes of 35 U.S.C. 315(a), as amended.
35 U.S.C. 315(b), as amended, will provide that an inter partes
review may not be instituted if the petition requesting the proceeding
is filed more than one year after the date on which the petitioner,
real party in interest, or privy of the petitioner is served with a
complaint alleging infringement of the patent. However, the time
limitation set forth in 35 U.S.C. 315(b), as amended, will not apply to
a request for joinder under 35 U.S.C. 315(c), as amended.
35 U.S.C. 315(c), as amended, will provide that if the Director
institutes an inter partes review, the Director may, in the Director's
discretion, join as a party to that inter partes review any person who
properly files a petition under 35 U.S.C. 311 that the Director, after
receiving a preliminary response under 35 U.S.C. 313 or the expiration
of the time for filing such a response, determines warrants the
institution of an inter partes review under 35 U.S.C. 314.
35 U.S.C. 315(d), as amended, will provide that, notwithstanding 35
U.S.C. 135(a), as amended, 251, and 252, and chapter 30 of title 35,
United States Code, during the pendency of an inter partes review, if
another proceeding or matter involving the patent is before the Office,
the Director may determine the manner in which the inter partes review
or other proceeding or matter may proceed, including providing for
stay, transfer, consolidation, or termination of any such matter or
proceeding.
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35 U.S.C. 315(e)(1), as amended, will provide that the petitioner
in an inter partes review of a claim in a patent under chapter 31 of
title 35, United States Code, that results in a final written decision
under 35 U.S.C. 318(a), or the real party in interest or privy of the
petitioner, may not request or maintain a proceeding before the Office
with respect to that claim on any ground that the petitioner raised or
reasonably could have raised during that inter partes review. 35 U.S.C.
315(e)(2), as amended, will provide for estoppel against an inter
partes review petitioner, or the real party in interest or privy of the
petitioner, in certain civil actions and certain other proceedings
before the International Trade Commission if that inter partes review
results in a final written decision under 35 U.S.C. 318(a).
Section 6(a) of the Leahy-Smith America Invents Act amends 35
U.S.C. 316, entitled "Conduct of inter partes review." 35 U.S.C.
316(a), as amended, will provide that the Director will prescribe
regulations: (1) Providing that the file of any proceeding under
chapter 31 of title 35, United States Code, will be made available to
the public, except that any petition or document filed with the intent
that it be sealed will, if accompanied by a motion to seal, be treated
as sealed pending the outcome of the ruling on the motion; (2) setting
forth the standards for the showing of sufficient grounds to institute
a review under 35 U.S.C. 314(a); (3) establishing procedures for the
submission of supplemental information after the petition is filed; (4)
establishing and governing inter partes review under chapter 31 of
title 35, United States Code, and the relationship of such review to
other proceedings under title 35, United States Code; (5) setting forth
standards and procedures for discovery of relevant evidence, including
that such discovery will be limited to: (A) The deposition of witnesses
submitting affidavits or declarations, and (B) what is otherwise
necessary in the interest of justice; (6) prescribing sanctions for
abuse of discovery, abuse of process, or any other improper use of the
proceeding, such as to harass or to cause unnecessary delay or an
unnecessary increase in the cost of the proceeding; (7) providing for
protective orders governing the exchange and submission of confidential
information; (8) providing for the filing by the patent owner of a
response to the petition under 35 U.S.C. 313, as amended, after an
inter partes review has been instituted, and require that the patent
owner file with such response, through affidavits or declarations, any
additional factual evidence and expert opinions on which the patent
owner relies in support of the response; (9) setting forth standards
and procedures for allowing the patent owner to move to amend the
patent under 35 U.S.C. 316(d), as amended, to cancel a challenged claim
or propose a reasonable number of substitute claims, and ensure that
any information submitted by the patent owner in support of any
amendment entered under 35 U.S.C. 316(d), as amended, is made available
to the public as part of the prosecution history of the patent; (10)
providing either party with the right to an oral hearing as part of the
proceeding; (11) requiring that the final determination in an inter
partes review will be issued not later than one year after the date on
which the Director notices the institution of a review under chapter 31
of title 35, United States Code, except that the Director may, for good
cause shown, extend the one-year period by not more than six months,
and may adjust the time periods in this paragraph in the case of
joinder under 35 U.S.C. 315(c), as amended; (12) setting a time period
for requesting joinder under 35 U.S.C. 315(c), as amended; and (13)
providing the petitioner with at least one opportunity to file written
comments within a time period established by the Director.
35 U.S.C. 316(b), as amended, will provide that in prescribing
regulations under 35 U.S.C. 316, the Director will consider the effect
of any such regulation on the economy, the integrity of the patent
system, the efficient administration of the Office, and the ability of
the Office to complete timely proceedings instituted under chapter 31
of title 35, United States Code.
35 U.S.C. 316(c), as amended, will provide that the Patent Trial
and Appeal Board will, in accordance with 35 U.S.C. 6, conduct each
inter partes review instituted under chapter 31 of title 35, United
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States Code.
35 U.S.C. 316(d)(1), as amended, will provide that during an inter
partes review instituted under chapter 31 of title 35, United States
Code, the patent owner may file one motion to amend the patent in one
or more of the following ways: (A) Cancel any challenged patent claim;
and (B) for each challenged claim, propose a reasonable number of
substitute claims. 35 U.S.C. 316(d)(2), as amended, provides that
additional motions to amend may be permitted upon the joint request of
the petitioner and the patent owner to materially advance the
settlement of a proceeding under 35 U.S.C. 317, as amended, or as
permitted by regulations prescribed by the Director. 35 U.S.C.
316(d)(3), as amended, will provide that an amendment under 35 U.S.C.
316(d) may not enlarge the scope of the claims of the patent or
introduce new matter.
35 U.S.C. 316(e), as amended, will provide that in an inter partes
review instituted under chapter 31 of title 35, United States Code, the
petitioner has the burden of proving a proposition of unpatentability
by a preponderance of the evidence.
Section 6(a) of the Leahy-Smith America Invents Act amends 35
U.S.C. 317, entitled "Settlement." 35 U.S.C. 317(a), as amended, will
provide that an inter partes review instituted under chapter 31 of
title 35, United States Code, will be terminated with respect to any
petitioner upon the joint request of the petitioner and the patent
owner, unless the Office has decided the merits of the proceeding
before the request for termination is filed. 35 U.S.C. 317(a), as
amended, will also provide that if the inter partes review is
terminated with respect to a petitioner under 35 U.S.C. 317, no
estoppel under 35 U.S.C. 315(e), as amended, will attach to the
petitioner, or to the real party in interest or privy of the
petitioner, on the basis of that petitioner's institution of that inter
partes review. 35 U.S.C. 317(a), as amended, will further provide that
if no petitioner remains in the inter partes review, the Office may
terminate the review or proceed to a final written decision under 35
U.S.C. 318(a).
35 U.S.C. 317(b), as amended, will provide that any agreement or
understanding between the patent owner and a petitioner, including any
collateral agreements referred to in the agreement or understanding,
made in connection with, or in contemplation of, the termination of an
inter partes review under 35 U.S.C. 317 will be in writing and a true
copy of such agreement or understanding will be filed in the Office
before the termination of the inter partes review as between the
parties. 35 U.S.C. 317(b), as amended, will also provide that at the
request of a party to the proceeding, the agreement or understanding
will be treated as business confidential information, will be kept
separate from the file of the involved patents, and will be made
available only to Federal Government agencies on written request, or to
any person on a showing of good cause.
Section 6(a) of the Leahy-Smith America Invents Act amends 35
U.S.C. 318, entitled "Decision of the Board." 35 U.S.C. 318(a), as
amended, will provide that if an inter partes review is instituted and
not dismissed under chapter 31 of title 35, United States Code, the
Patent Trial and Appeal Board will issue a final written decision with
respect to the patentability of any patent claim challenged by the
petitioner and any new claim added under 35 U.S.C. 316(d). 35 U.S.C.
318(b), as amended, will provide that if the Patent Trial and Appeal
Board issues a final written decision under 35 U.S.C. 318(a) and the
time for appeal has expired or any appeal has terminated, the Director
will issue and publish a certificate canceling any claim of the patent
finally determined to be unpatentable, confirming any claim of the
patent determined to be patentable, and incorporating in the patent by
operation of the certificate any new or amended claim determined to be
patentable. 35 U.S.C. 318(c), as amended, will provide that any
proposed amended or new claim determined to be patentable and
incorporated into a patent following an inter partes review under
chapter 31 of title 35, United States Code, will have the same effect
as that specified in 35 U.S.C. 252 for reissued patents on the right of
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any person who made, purchased, or used within the United States, or
imported into the United States, anything patented by such proposed
amended or new claim, or who made substantial preparation therefor,
before the issuance of a certificate under 35 U.S.C. 318(b). 35 U.S.C.
318(d), as amended, will provide that the Office will make available to
the public data describing the length of time between the institution
of, and the issuance of a final written decision under 35 U.S.C.
318(a), for each inter partes review.
Section 6(a) of the Leahy-Smith America Invents Act adds 35 U.S.C.
319, entitled "Appeal." 35 U.S.C. 319 will provide that a party
dissatisfied with the final written decision of the Patent Trial and
Appeal Board under 35 U.S.C. 318(a), as amended, may appeal the
decision pursuant to 35 U.S.C. 141-144. 35 U.S.C. 319 will also provide
that any party to the inter partes review will have the right to be a
party to the appeal.
Section 6(c) of the Leahy-Smith America Invents Act is entitled
"REGULATIONS AND EFFECTIVE DATE." Section 6(c)(1) of the Leahy-Smith
America Invents Act provides that the Director will, not later than the
date that is one year after the date of the enactment of the Leahy-
Smith America Invents Act, issue regulations to carry out chapter 31 of
title 35, United States Code, as amended by section 6(a) of the Leahy-
Smith America Invents Act.
Section 6(c)(2)(A) of the Leahy-Smith America Invents Act provides
that the amendments made by section 6(a) of the Leahy-Smith America
Invents Act will take effect upon the expiration of the one-year period
beginning on the date of the enactment of the Leahy-Smith America
Invents Act, and will apply to any patent issued before, on, or after
that effective date.
Section 6(c)(2)(B) of the Leahy-Smith America Invents Act provides
that the Director may impose a limit on the number of inter partes
reviews that may be instituted under chapter 31 of title 35, United
States Code, during each of the first four one-year periods in which
the amendments made by section 6(a) of the Leahy-Smith America Invents
Act are in effect, if such number in each year equals or exceeds the
number of inter partes reexaminations that are ordered under chapter 31
of title 35, United States Code, in the last fiscal year ending before
the effective date of the amendments made by section 6(a) of the Leahy-
Smith America Invents Act.
Section 6(c)(3) Leahy-Smith America Invents Act provides a
transition provision for the granting, conduct, and termination of
inter partes reexaminations on or after the effective date of the
Leahy-Smith America Invents Act. The Office in a separate rulemaking
revised the rules governing inter partes reexamination to implement the
transition provision that changes the standard for granting a request
for inter partes reexamination, and to reflect the termination of inter
partes reexamination effective September 16, 2012. See Revision of
Standard for Granting an Inter partes Reexamination Request, 76 FR
59055 (Sept. 23, 2011) (final rule).
Discussion of Specific Rules
This notice proposes new rules to implement the provisions of the
Leahy-Smith America Invents Act for instituting and conducting inter
partes review proceedings before the Patent Trial and Appeal Board
(Board). As previously discussed, 35 U.S.C. 316(a)(4), as amended by
the Leahy-Smith America Invents Act, provides that the Director will
prescribe regulations establishing and governing inter partes review
and the relationship of the review to other proceedings under title 35
of the United States Code. In particular, this notice proposes to add a
new subpart B to 37 CFR part 42 to provide rules specific to inter
partes review.
Additionally, the Office in a separate rulemaking is proposing to
add part 42, (RIN 0651-AC70) including subpart A, that would include a
consolidated set of rules relating to Board trial practice. More
specifically, the proposed subpart A of part 42 would set forth the
policies, practices, and definitions common to all trial proceedings
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before the Board. The proposed rules in the instant notice and
discussion below may reference the proposed rules in subpart A of part
42. Furthermore, the Office in separate rulemakings is proposing to add
a new subpart C to 37 CFR part 42 (RIN 0651-AC72) to provide rules
specific to post-grant review, a new subpart D to 37 CFR part 42 (RIN
0651-AC73; RIN 0651-AC75) to provide rules specific to the transitional
program for covered business method patents, and a new subpart E to 37
CFR part 42 (RIN 0651-AC74) to provide rules specific to derivation.
Title 37 of the Code of Federal Regulations, Chapter I, Part 42,
Subpart B, entitled "Inter partes Review" is proposed to be added as
follows:
Section 42.100: Proposed § 42.100 would set forth policy
considerations for inter partes review proceedings.
Proposed § 42.100(a) would provide that an inter partes review
is a trial and subject to the rules set forth in subpart A of title 42,
Code of Federal Regulations.
Proposed § 42.100(b) would provide that a claim in an unexpired
patent shall be given its broadest reasonable construction in light of
the specification in which it appears. This proposed rule would be
consistent with longstanding established principles of claim
construction before the Office. In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004); In re Yamamoto, 740 F.2d 1569, 1571
(Fed. Cir. 1984). As explained in Yamamoto, a party's ability to amend
claims to avoid prior art distinguishes Office proceedings from
district court proceedings and justifies the difficult standard for
claim interpretation. Yamamoto, 740 F.2d at 1572.
Proposed § 42.100(c) would provide a one-year time frame for
administering the proceeding after institution, with up to a six-month
extension for good cause. This proposed rule is consistent with 35
U.S.C. 316(a)(11), as amended, which sets forth statutory time frames
for inter partes review.
Section 42.101: Proposed § 42.101 would provide who may file a
petition for inter partes review.
Proposed § 42.101(a) would provide that a party or real party
in interest must file a petition prior to the filing of a civil action
challenging the validity of a claim of the patent. The proposed rule
would follow the statutory language of 35 U.S.C. 315(a), as amended,
which will provide that inter partes reviews are barred by prior filing
of such a civil action.
Proposed § 42.101(b) would provide that a petition may not be
filed more than one year after the date on which the petitioner, the
petitioner's real party in interest, or a privy of the petitioner was
served with a complaint alleging infringement. The proposed rule would
follow the statutory language of 35 U.S.C. 315(b), as amended, which
will provide a one-year time limit after date of service of complaint.
Proposed § 42.101(c) would provide that a person may not file a
petition where the petitioner, the petitioner's real party in interest,
or a privy of the petitioner is estopped from challenging the claims.
The proposed rule is consistent with 35 U.S.C. 315(e)(1), as amended,
which will provide for estoppel arising from a final written decision
in an inter partes review. The proposed rule is also consistent with 35
U.S.C. 325(e)(1), which will provide for estoppel arising from a final
written decision in a post-grant review or a covered business method
review.
Section 42.102: Proposed § 42.102 would provide a timeliness
requirement for filing an inter partes review petition.
Proposed § 42.102(a) would provide that a petition for inter
partes review must be filed consistent with the requirements set forth
in 35 U.S.C. 311(c), as amended. Petitions requesting the institution
of an inter partes review that are filed nine months after the grant of
the patent or of the issuance of the reissue patent, but prior to the
institution of a post-grant review would be considered timely filed.
Additionally, petitions filed after termination of a post-grant review
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would be considered timely.
Proposed § 42.102(b) would provide that the Director may set a
limit on the number of inter partes reviews that may be instituted
during each of the first four one-year periods after inter partes
review takes effect. This proposed rule is consistent with section
6(c)(2)(B) of the Leahy-Smith America Invents Act (Pub. L. 112-29, 125
Stat. 284, 304 (2011)), which provides for graduated implementation of
inter partes reviews. The Office however, does not expect to limit the
number of petitions at this time.
Section 42.103: Proposed § 42.103 would set forth the fee requirement
for filing an inter partes review petition.
Proposed § 42.103(a) would provide that a fee under § 42.15(a) must
accompany a petition for inter partes review.
Proposed § 42.103(b) would provide that no filing date will be
accorded until full payment is received. This proposed rule is
consistent with 35 U.S.C. 312(a)(1), as amended, which will provide
that a petition may only be considered if the petition is accompanied
by the payment of the fee established by the Director.
Section 42.104: Proposed § 42.104 would provide for the content
of petitions to institute an inter partes review. The proposed rule is
consistent with 35 U.S.C 312(a)(4), as amended, which allows the
Director to prescribe regulations concerning the information provided
with the petition.
Proposed § 42.104(a) would provide that a petition must
demonstrate that the petitioner has standing. To establish standing, a
petitioner, at a minimum, must certify that the patent is available for
inter partes review and that the petitioner is not barred or estopped
from requesting an inter partes review. This proposed requirement would
attempt to ensure that a party has standing to file the inter partes
review and would help prevent spuriously-instituted inter partes
reviews. Facially-improper standing would be a basis for denying the
petition without proceeding to the merits of the petition.
Proposed § 42.104(b) would require that the petition identify
the precise relief requested for the claims challenged. Specifically,
the proposed rule would require that the petition identify each claim
being challenged, the specific grounds on which each claim is
challenged, how the claims are to be construed, why the claims as
construed are unpatentable under the identified grounds, and the
exhibit numbers of the evidence relied upon with a citation to the
portion of the evidence that is relied upon to support the challenge.
This proposed rule is consistent with 35 U.S.C. 312(a)(3), as amended,
which requires that the petition identify, in writing and with
particularity, each claim challenged, the grounds on which the
challenge to each claim is based, and the evidence supporting the
challenge. It is also consistent with 35 U.S.C. 312(a)(4), as amended,
which allows the Director to require additional information as part of
the petition. The proposed rule would provide an efficient means for
identifying the legal and factual basis for satisfying the threshold
for instituting inter partes review and would provide the patent owner
with a minimum level of notice as to the basis for the challenge to the
claims.
Proposed § 42.104(c) would provide that a petitioner seeking to
correct clerical or typographical mistakes in a petition could file a
motion to correct the mistakes. The proposed rule would also provide
that the grant of such a motion would not alter the filing date of the
petition.
Section 42.105: Proposed § 42.105 would provide petition and
exhibit service requirements in addition to the service requirements of
§ 42.6.
Proposed § 42.105(a) would require that the petitioner serve
the patent owner at the correspondence address of record for the
subject patent and permits service at any other address known to the
petitioner as likely to effect service as well. Once a patent has
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issued, communications between the Office and the patent owner often
suffer. Ray v. Lehman, 55 F.3d 606 (Fed. Cir. 1995) (patentee's failure
to maintain correspondence address contributed to failure to pay
maintenance fee and therefore expiration of the patent). While the
proposed rule requires service at the correspondence address of record
in the patent, the petitioner will already be in communication with the
patent owner in many cases at a better service address than the
correspondence address of record for the subject patent.
Proposed § 42.105(b) would address the situation where service
to the official correspondence address of the patent does not result in
actual service on the patent owner. When the petitioner becomes aware
of a service problem, the petitioner would be required to promptly
advise the Board of the problem. The petitioner might then be required
to certify that it is not aware of any better address for service of
the patent owner. The Board may authorize other forms of service, such
as service by publication in the Official Gazette of the United States
Patent and Trademark Office or Federal Register.
Section 42.106: Proposed § 42.106 would provide for the filing
date requirements of an inter partes review petition.
Proposed § 42.106(a) would provide requirements for a complete
petition. 35 U.S.C. 312(a), as amended, states that a petition may only
be considered when the petition identifies all the real parties in
interest, when a copy of the petition is provided to the patent owner
or the owner's representative and the petition is accompanied by the
fee established by the Director. Consistent with the statute, the
proposed rule would require that a petition to institute an inter
partes review will not be accorded a filing date until the petition:
(1) Complies with § 42.104; (2) is served upon the patent owner at
the correspondence address of record provided in § 42.105(a); and
(3) is accompanied by the fee set forth in § 42.15(a).
Proposed § 42.106(b) would provide petitioners a one month time
frame to correct defective petitions to institute an inter partes
review. The proposed rule is consistent with the requirement of 35
U.S.C. 312(a), as amended, that the Board may not consider a petition
that fails to meet the statutory requirements for a petition. In
determining whether to grant a filing date, the Board would review the
petitions for procedural compliance. Where a procedural defect is
noted, e.g., failure to state the claims being challenged, the Board
would notify the petitioner that the petition was incomplete and
identify any non-compliance issues.
Section 42.107: Proposed § 42.107 would set forth the procedure
in which the patent owner may file a preliminary response.
Proposed § 42.107(a) would provide that the patent owner may
file a preliminary response to the petition. The rule is consistent
with 35 U.S.C. 313, as amended, which provides for such a response.
Proposed § 42.107(b) would provide that the due date for the
preliminary response to petition is no later than two months from the
date of the notice that the request to institute an inter partes review
has been granted a filing date. This proposed rule is consistent with
35 U.S.C. 313, as amended, which provides that the Director shall set a
time period for filing the preliminary patent owner response.
Under 35 U.S.C. 314(b), as amended, the Board has three months from
the filing of the preliminary patent owner response, or three months
from the date such a response was due, to determine whether to
institute the review. A patent owner seeking a shortened period for
such a determination may wish to file a preliminary patent owner
response well before the date the preliminary patent owner response is
due, including filing a paper stating that no preliminary patent owner
response will be filed. No adverse inferences will be drawn where a patent
owner elects not to file a response or elects to waive the response.
Proposed § 42.107(c) would provide that the preliminary patent
owner response would not be allowed to present new testimony evidence,
for example, expert witness testimony on patentability. 35 U.S.C. 313,
as amended, will provide that a preliminary patent owner response set
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forth reasons why no inter partes review should be instituted. In
contrast, 35 U.S.C. 316(a)(8), as amended, provides for a patent owner
response after institution and requires the presentation, through
affidavits or declarations, of any additional factual evidence and
expert opinions on which the patent owner relies in support of the
response. The difference in statutory language demonstrates that 35
U.S.C. 313, as amended, does not require the presentation of evidence
in the form of testimony in support of a preliminary patent owner
response and the proposed rule reflects this distinction. In certain
instances, however, a patent owner may be granted additional discovery
before filing their preliminary response and submit any testimonial
evidence obtained through the discovery. For example, additional
discovery may be authorized where patent owner raises sufficient
concerns regarding the petitioner's certification of standing.
Proposed § 42.107(d) would provide that the preliminary patent
owner response would not be allowed to include any amendment. See
proposed § 42.121 for filing a motion to amend the patent after an
inter partes review has been instituted.
Proposed § 42.107(e) would provide that the patent owner may
file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with
§ 1.321(a), disclaiming one or more claims in the patent, and no
inter partes review will be instituted based on disclaimed claims.
Section 42.108: Proposed § 42.108 would provide for the
institution of an inter partes review.
35 U.S.C. 314(a), as amended, states that the Director may not
authorize an inter partes review to be instituted, unless the Director
determines that the information in the petition, and any preliminary
patent owner response, shows that there is a reasonable likelihood of
success that the petitioner would prevail with respect to at least one
of the claims challenged in the petition. Proposed § 42.108 is
consistent with this statutory requirement and identifies how the Board
may authorize such a review to proceed.
Proposed § 42.108(a) would provide that the Board may authorize
the review to proceed on all or some of the challenged claims and on
all or some of the grounds of unpatentability asserted for each claim.
Specifically, in instituting the review, the Board would authorize the
review to proceed on the challenged claims for which the threshold
requirements for the proceeding have been met. The Board will identify
which of the grounds the review will proceed upon on a claim-by-claim
basis. Any claim or issue not included in the authorization for review
is not part of the review. The Office intends to publish a notice of
the institution of an inter partes review in the Official Gazette.
Proposed § 42.108(b) would provide that the Board, prior to
institution of a review, may deny some or all grounds for
unpatentability on some or all of the challenged claims. This proposed
rule is consistent with the efficient administration of the Office,
which is a consideration in prescribing inter partes review regulations
under 35 U.S.C. 316(b), as amended.
Proposed § 42.108(c) would provide that the institution is
based on a reasonable likelihood standard and is consistent with the
requirements of 35 U.S.C. 314(a), as amended. A reasonable likelihood
standard is a somewhat flexible standard that allows the judge room for
the exercise of judgment.
Section 42.120: Proposed § 42.120 would set forth the procedure
in which the patent owner may file a patent owner response.
Proposed § 42.120(a) would provide for a patent owner response
and is consistent with the requirements of 35 U.S.C. 316(a)(8), as
amended.
Proposed § 42.120(b) would provide that if no time for filing a
patent owner response to a petition is provided in a Board order, the
default time for filing the response would be two months from the date
the inter partes review was instituted. The Board's experience with
patent owner responses is that two months provides a sufficient amount
of time to respond in a typical case, especially as the patent owner
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would already have been provided two months to file a preliminary
patent owner response prior to institution of the inter partes review.
Additionally, the proposed time for response is consistent with the
requirement that the trial be conducted such that a final decision is
rendered within one year of the institution of the review. 35 U.S.C.
316(a)(11), as amended.
Section 42.121: Proposed § 42.121 would provide a procedure for
a patent owner to file motions to amend the patent.
Proposed § 42.121(a) would make it clear that the first motion
to amend need not be authorized by the Board. If the motion complies
with the timing and procedural requirements, the motion would be
entered. Additional motions to amend would require prior Board
authorization. All motions to amend, even if entered, will not
automatically result in entry of the proposed amendment into the
patent.
The requirement to consult the Board reflects the Board's need to
regulate the substitution of claims and the amendment of the patent to
control unnecessary proliferation of issues and abuses. The proposed
rule aids in the efficient administration of the Office and the timely
completion of the review under 35 U.S.C. 316(b), as amended.
Proposed § 42.121(b) would provide that a motion to amend the
claims must set forth: (1) The support in the original disclosure of
the patent for each claim that is added or amended, and (2) the support
in an earlier filed disclosure for each claim for which benefit of the
filing date of the earlier filed disclosure is sought.
Proposed § 42.121(c) would provide that a motion to amend the
claims will not be authorized where the amendment does not respond to
the ground of unpatentability involved in the trial or seeks to enlarge
the scope of the claims or introduce new matter. The proposed rule aids
the efficient administration of the Office and the timely completion of
the review under 35 U.S.C. 316(b), as amended, and also is consistent
with 35 U.S.C. 316(d)(3), as amended, which prohibits enlarging the
scope of the claims or introducing new matter.
Under the proposed rules, a patent owner may request filing more
than one motion to amend its claims during the course of the
proceeding. Additional motions to amend may be permitted upon a
demonstration of good cause by the patent owner. In considering whether
good cause is shown, the Board will take into account how the filing of
such motions would impact the timely completion of the proceeding and
the additional burden placed on the petitioner. Specifically, belated
motions to amend may cause the integrity and efficiency of the review
to suffer as the petitioner may be required to devote significant time
and resources on claims that are of constantly changing scope. Further,
due to time constraints, motions to amend late in the process may not
provide a petitioner a full and fair opportunity to respond to the
newly presented subject matter. Accordingly, the longer a patent owner
waits to request authorization to file an additional motion to amend, the
higher the likelihood the request will be denied. Similarly, motions to
amend may be permitted upon a joint request of the petitioner and the
patent owner to advance settlement where the motion does not jeopardize
the ability of the Office to timely complete the proceeding.
Section 42.122: Proposed § 42.122 would prescribe a rule
consistent with the requirements of 35 U.S.C. 315(d), as amended,
regarding multiple proceedings involving the subject patent. When there
is a question of a stay concerning a matter for which a statutory time
period is running in one of the proceedings, it is expected that the
Director would be consulted prior to issuance of a stay, given that the
stay would impact the ability of the Office to meet the statutory
deadline. For example, it is expected that the Board would consult the
Director prior to the issuance of a stay in an ex parte reexamination
proceeding where the three month statutory time period under 35 U.S.C.
303 is running.
Section 42.123: Proposed § 42.123 would provide for the filing
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of supplemental information. 35 U.S.C. 316(a)(3), as amended, provides
that the Director will establish regulations establishing procedures
for filing supplemental information after the petition is filed. 35
U.S.C. 314(a), as amended, provides that the institution of an inter
partes review is based upon the information filed in the petition under
35 U.S.C. 311 and any response filed under 35 U.S.C. 313, as amended.
As the institution of the inter partes review is not based upon
supplemental information, the proposed rule would provide that motions
identifying supplemental information be filed after the institution of
the inter partes review.
Rulemaking Considerations
A. Administrative Procedure Act (APA): This notice proposes rules
of practice concerning the procedure for requesting an inter partes
review, and the trial process after initiation of such a review. The
changes being proposed in this notice do not change the substantive
criteria of patentability. These proposed changes involve rules of
agency practice and procedure and/or interpretive rules. See Bachow
Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (DC Cir. 2001) (rules governing
an application process are procedural under the Administrative
Procedure Act); Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 350
(4th Cir. 2001) (rules for handling appeals were procedural where they
did not change the substantive standard for reviewing claims); Nat'l
Org. of Veterans' Advocates v. Sec'y of Veterans Affairs, 260 F.3d
1365, 1375 (Fed. Cir. 2001) (rule that clarifies interpretation of a
statute is interpretive).
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law), and
thirty-day advance publication is not required pursuant to 5 U.SC.
553(d) (or any other law). See Cooper Techs. Co. v. Dudas, 536 F.3d
1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35
U.S.C. 2(b)(2)(B), does not require notice and comment rule making for
"interpretative rules, general statements of policy, or rules of
agency organization, procedure, or practice") (quoting 5 U.S.C.
553(b)(A)). The Office, however, is publishing these changes and the
Initial Regulatory Flexibility Act analysis, below, for comment as it
seeks the benefit of the public's views on the Office's proposed
implementation of these provisions of the Leahy-Smith America Invents
Act.
B. Regulatory Flexibility Act: The Office estimates that 460
petitions for inter partes review will be filed in fiscal year 2013.
This will be the first fiscal year in which inter partes review
proceedings will be available for an entire fiscal year. The estimate
for inter partes review petitions is partially based on the number of
inter partes reexamination requests under 37 CFR 1.915 that have been
filed in fiscal years 2010 and 2011.
The Office received 281 requests for inter partes reexamination in
fiscal year 2010. See Table 13B of the United States Patent and
Trademark Office Performance and Accountability Report for Fiscal Year
2010, available at
http://www.uspto.gov/about/stratplan/ar/2010/USPTOFY2010PAR.pdf.
The Office received 374 requests for inter partes reexamination in
fiscal year 2011. See Table 14B of the United States Patent and
Trademark Office Performance and Accountability Report for Fiscal Year
2011, available at
http://www.uspto.gov/about/stratplan/ar/2011/USPTOFY2011PAR.pdf.
Additionally, the Office takes into consideration the recent growth
rate in the number of requests for inter partes reexamination, the
projected growth due to an expansion in the number of eligible patents
under the inter partes review provisions of the Leahy-Smith America
Invents Act (see § 6(c)), and the more restrictive filing time
period in 35 U.S.C. 315(b), as amended by the Leahy-Smith America
Invents Act.
The Office has reviewed the entity status of patents for which
inter partes reexamination was requested from October 1, 2000, to
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September 23, 2011. This data only includes filings granted a filing
date in the particular year rather than fillings in which a request was
received in the year. The first inter partes reexamination was filed on
July 27, 2001. A summary of that review is provided in Table 1 below.
As shown by Table 1, patents known to be owned by a small entity
represented 32.79% of patents for which inter partes reexamination was
requested. Based on an assumption that the same percentage of patents
owned by small entities will be subject to inter partes review, it is
estimated that 151 petitions for inter partes review would be filed to
seek review of patents owned by a small entity in fiscal year 2013, the
first full fiscal year that these proceedings will be available.
Table 1 - Inter partes Reexamination Requests Filed with
Parent Entity Type *
Number filed
Inter partes where parent Percent small
reexamination patent is small entity type of
Fiscal year requests filed entity type total
2011 329 123 37.39
2010 255 94 36.86
2009 240 62 25.83
2008 155 52 33.55
2007 127 35 27.56
2006 61 17 27.87
2005 59 18 30.51
2004 26 5 19.23
2003 21 12 57.14
2002 4 1 25.00
2001 1 0 0.00
1,278 419 32.79
* Small entity status determined by reviewing preexamination small entity
indicator for the parent patent.
Based on the number of patents issued during fiscal years 1995
through 1999 that paid the small entity third stage maintenance fee,
the number of patents issued during fiscal years 2000 through 2003 that
paid the small entity second stage maintenance fee, the number of
patents issued during fiscal years 2004 through 2007 that paid the
first stage maintenance fee, and the number of patents issued during
fiscal years 2008 through 2011 that paid a small entity issue fee,
there are no less than 375,000 patents owned by small entities in force
as of October 1, 2011.
Furthermore, the Office recognizes that there would be an offset to
this number for patents that expire earlier than twenty years from
their filing date due to a benefit claim to an earlier application or
due to a filing of a terminal disclaimer. The Office likewise
recognizes that there would be an offset in the opposite manner due to
the accrual of patent term extension and adjustment. The Office,
however, does not maintain data on the date of expiration by operation
of a terminal disclaimer. Therefore, the Office has not adjusted the
estimate of 375,000 patents owned by small entities in force as of
October 1, 2011. While the Office maintains information regarding
patent term extension and adjustment accrued by each patent, the Office
does not collect data on the expiration date of patents that are
subject to a terminal disclaimer. As such, the Office has not adjusted
the estimated of 375,000 patents owned by small entities in force as of
October 1, 2011, for accrual of patent term extension and adjustment,
because in view of the incomplete terminal disclaimer data issue, would
be incomplete and any estimate adjustment would be administratively
burdensome. Thus, it is estimated that the number of small entity
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patents in force in fiscal year 2013 will be at least 375,000.
Based on the estimated number of patents in force, the number of
small entity owned patents impacted by inter partes review in fiscal
year 2013 (151 patents) would be less than 0.05% (151/375,000) of all
patents in force that are owned by small entities. The USPTO
nonetheless has undertaken an Initial Regulatory Flexibility Act
Analysis of the proposed rule.
1. Description of the Reasons That Action by the Office Is Being
Considered: On September 16, 2011, the Leahy-Smith America Invents Act
was enacted into law (Pub. L. 112-29, 125 Stat. 284 (2011)). Section 6
of the Leahy-Smith America Invents Act amends chapter 31 of title 35,
United States Code, to create a new inter partes review proceeding
which will take effect on September 16, 2012, one year after the date
of enactment, and eliminate inter partes reexamination (except for
requests filed before the effective date of September 16, 2012). For
the implementation, § 6(c) of the Leahy-Smith America Invents Act
requires that the Director issue regulations to carry out chapter 31 as
amended of title 35, United States Code, within one year after the date
of enactment. Public Law 112-29, § 6(c), 125 Stat. 284, 304 (2011).
2. Succinct Statement of the Objectives of, and Legal Basis for,
the Proposed Rules: The proposed rules seek to implement inter partes
review as authorized by the Leahy-Smith America Invents Act. The Leahy-
Smith America Invents Act requires that the Director prescribe rules
for the inter partes review that result in a final determination not
later than one year after the date on which the Director notices the
institution of a proceeding. The one-year period may be extended for
not more than six months if good cause is shown. See 35 U.S.C.
316(a)(11), as amended. The Leahy-Smith America Invents Act also
requires that the Director, in prescribing rules for the inter partes
review, consider the effect of the rules on the economy, the integrity
of the patent system, the efficient administration of the Office, and
the ability of the Office to complete timely the instituted
proceedings. See 35 U.S.C. 316(b), as amended. Consistent with the time
periods provided in 35 U.S.C. 316(a)(11), as amended, the proposed
rules are designed to, except where good cause is shown to exist,
result in a final determination by the Patent Trial and Appeal Board
within one year of the notice of initiation of the review. This one-
year review will enhance the effect on the economy, and improve the
integrity of the patent system and the efficient administration of the
Office.
3. Description and Estimate of the Number of Affected Small
Entities: The Small Business Administration (SBA) small business size
standards applicable to most analyses conducted to comply with the
Regulatory Flexibility Act are set forth in 13 CFR 121.201. These
regulations generally define small businesses as those with fewer than
a specified maximum number of employees or less than a specified level
of annual receipts for the entity's industrial sector or North American
Industry Classification System (NAICS) code. As provided by the
Regulatory Flexibility Act, and after consultation with the Small
Business Administration, the Office has formally adopted an alternate
size standard as the size standard for the purpose of conducting an
analysis or making a certification under the Regulatory Flexibility Act
for patent-related regulations. See Business Size Standard for Purposes
of United States Patent and Trademark Office Regulatory Flexibility
Analysis for Patent-Related Regulations, 71 FR 67109 (Nov. 20, 2006),
1313 Off. Gaz. Pat. Office 60 (Dec. 12, 2006). This alternate small
business size standard is SBA's previously established size standard
that identifies the criteria entities must meet to be entitled to pay
reduced patent fees. See 13 CFR 121.802. If patent applicants identify
themselves on a patent application as qualifying for reduced patent
fees, the Office captures this data in the Patent Application Location
and Monitoring (PALM) database system, which tracks information on each
patent application submitted to the Office.
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Unlike the SBA small business size standards set forth in 13 CFR
121.201, the size standard for USPTO is not industry-specific. The
Office's definition of a small business concernfor Regulatory Flexibility
Act purposes is a business or other concern that: (1) Meets the SBA's
definition of a "business concern or concern" set forth in 13 CFR 121.105;
and (2) meets the size standards set forth in 13 CFR 121.802 for the purpose
of paying reduced patent fees, namely an entity: (a) Whose number of
employees, including affiliates, does not exceed 500 persons; and (b) which
has not assigned, granted, conveyed, or licensed (and is under no obligation
to do so) any rights in the invention to any person who made it and could
not be classified as an independent inventor, or to any concern which
would not qualify as a non-profit organization or a small business
concern under this definition. See Business Size Standard for Purposes
of United States Patent and Trademark Office Regulatory Flexibility
Analysis for Patent-Related Regulations, 71 FR at 67112 (Nov 20, 2006),
1313 Off. Gaz. Pat. Office at 63 (Dec. 12, 2006).
As discussed above, it is anticipated that 460 petitions for inter
partes review will be filed in fiscal year 2013. The Office has
reviewed the percentage of patents for which inter partes reexamination
was requested from October 1, 2000, to September 23, 2011. A summary of
that review is provided in Table 1 above. As demonstrated by Table 1,
patents known to be owned by a small entity represent 32.79% of patents
for which inter partes reexamination was requested. Based on an
assumption that the same percentage of patents owned by small entities
will be subject to the new review proceedings, it is estimated that 151
patents owned by small entities would be affected by an inter partes
review.
The USPTO estimates that 2.5% of patent owners will file a request
for adverse judgment prior to a decision to institute and that another
2.5% will file a request for adverse judgment or fail to participate
after initiation. Specifically, an estimated 21 patent owners will file
a request for adverse judgment or fail to participate after institution
in inter partes review. Based on the percentage of small entity owned
patents that were the subject of inter partes reexamination (32.79%)
from October 1, 2000 to September 23, 2011, it is estimated that 7
small entities will file such requests or fail to participate in inter
partes review proceedings.
Under the proposed rules, prior to determining whether to institute
a review, the patent owner may file an optional patent owner
preliminary response to the petition. Given the new time period
requirements to file a petition for review before the Board relative to
patent enforcement proceedings and the desire to avoid the cost of a
trial and delays to related infringement actions, it is anticipated
that 90% of petitions, other than those for which a request for adverse
judgment is filed, will result in the filing of a patent owner
preliminary response. Where an inter partes review petition is filed
close to the expiration of the one-year period set forth in 35 U.S.C.
315(b), as amended, a patent owner would likely be advantaged by filing
a successful preliminary response. In view of these considerations, it
is anticipated that 90% of patent owners will file a preliminary
response. Specifically, the Office estimates that 406 patent owners
will file a preliminary response to an inter partes review petition.
Based on the percentage of small entity owned patents that were the
subject of inter partes reexamination (32.79%), it is estimated that
133 small entities will file a preliminary response to an inter partes
review petition in fiscal year 2013.
Under the proposed rules, the Office will determine whether to
institute a trial within three months after the earlier of: (1) The
submission of a patent owner preliminary response, (2) the waiver of
filing a patent owner preliminary response, or (3) the expiration of
the time period for filing a patent owner preliminary response. If the
Office decides not to institute a trial, the petitioner may file a
request for reconsideration of the Office's decision. In estimating the
number of requests for reconsideration, the Office considered the
percentage of inter partes reexaminations that were denied relative to
those that were ordered (24 divided by 342, or 7%) in fiscal year 2011.
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See Reexaminations - FY 2011, http://www.uspto.gov/patents/Reexamination_
operational_statistic_through_FY2011Q4.pdf. The Office also considered the
impact of: (1) Patent owner preliminary responses under newly authorized
in 35 U.S.C. 313, as amended, (2) the enhanced thresholds for instituting
reviews set forth in 35 U.S.C. 314(a), as amended, which would tend
to increase the likelihood of dismissing a petition for review, and
(3) the more restrictive time period for filing a petition for review in
35 U.S.C. 315(b), as amended, which would tend to reduce the likelihood of
dismissing a petition. Based on these considerations, it is estimated that
10% of the petitions for review (45 divided by 449) would be dismissed.
During fiscal year 2011, the Office issued twenty-one decisions
following a request for reconsideration of a decision on appeal in
inter partes reexamination. The average time from original decision to
decision on reconsideration was 4.4 months. Thus, the decisions on
reconsideration were based on original decisions issued from July 2010
until June 2011. During this time period, the Office mailed sixty-three
decisions on appeals in inter partes reexamination. See BPAI
Statistics--Receipts and Dispositions by Technology Center,
http://www.uspto.gov/ip/boards/bpai/stats/receipts/index.jsp (monthly data).
Based on the assumption that the same rate of reconsideration (21
divided by 63 or 33.333%) will occur, the Office estimates that 15
requests for reconsideration will be filed. Based on the percentage of
small entity owned patents that were the subject of inter partes
reexamination (32.79%), it is estimated that five small entities will
file a request for a reconsideration of a decision dismissing the
petition for inter partes review in fiscal year 2013.
The Office reviewed motions, oppositions, and replies in a number
of contested trial proceedings before the trial section of the Board.
The review included determining whether the motion, opposition, and
reply were directed to patentability grounds and non-priority non-
patentability grounds. Based on the review, it is anticipated that
inter partes reviews will have an average of 6.92 motions, oppositions,
and replies per trial after institution. Settlement is estimated to
occur in 20% of instituted trials at various points of the trial. In
the trials that are settled, it is estimated that only 50% of the noted
motions, oppositions, and replies would be filed.
After an inter partes review trial has been instituted but prior to
a final written decision, parties to a review may request an oral
hearing. It is anticipated that 411 requests for oral hearings will be
filed based on the number of requests for oral hearings in inter partes
reexamination, the stated desirability for oral hearings during the
legislative process, and the public input received prior to this notice
of proposed rulemaking. Based on the percentage of small entity owned
patents that were the subject of inter partes reexamination (32.79%),
it is estimated that 135 small entities will file a request for oral
hearing in the inter partes reviews instituted in fiscal year 2013.
Parties to an inter partes review may file requests to treat a
settlement as business confidential and requests for adverse judgment.
A written request to make a settlement agreement available may also be
filed. Given the short time period set for conducting trials, it is
anticipated that the alternative dispute resolution options will be
infrequently used. The Office estimates that 16 requests to treat a
settlement as business confidential and 91 requests for adverse judgment,
default adverse judgment, or settlement notices will be filed. The Office
also estimates that 16 requests to make a settlement available will be
filed. Based on the percentage of small entity owned patents that were the
subject of inter partes reexamination (32.79%), it is estimated that 5
small entities will file a request to treat a settlement as business
confidential, and thirty small entities will file a request for adverse
judgment, default adverse judgment notices, or settlement notices in the
inter partes reviews instituted in fiscal year 2013.
Parties to an inter partes review may seek judicial review of the
final decision of the Board. Historically, 33% of examiner's decisions
in inter partes reexamination proceedings have been appealed to the
Board. It is anticipated that 16% of final decisions of the Board would
be appealed. The reduction in appeal rate is based on the higher
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threshold for institution, the focused process, and the experience of
the Board in conducted contested cases. Therefore, it is estimated that
46 would seek judicial review of the final decisions of the Board in
inter partes reviews instituted in fiscal year 2013. Furthermore, based
on the percentage of small entity owned patents that were the subject
of inter partes reexamination (32.79%), it is estimated that fifteen
small entities would seek judicial review of final decisions of the
Board in the inter partes reviews instituted in fiscal year 2013.
4. Description of the Reporting, Recordkeeping, and Other
Compliance Requirements of the Proposed Rule, Including an Estimate of
the Classes of Small Entities Which Will Be Subject to the Requirement
and the Type of Professional Skills Necessary for Preparation of the
Report or Record: Based on the filing trends of inter partes
reexamination requests, it is anticipated that petitions for inter
partes review will be filed across all technologies with approximately
50% being filed in electrical technologies, approximately 30% in
mechanical technologies, and the remaining 20% in chemical technologies
and design. Under the proposed rules, a person who is not the owner of
a patent may file a petition to institute a review of the patent, with
a few exceptions. Given this, it is anticipated that a petition for
review is likely to be filed by an entity practicing in the same or
similar field as the patent. Therefore, it is anticipated that 50% of
the petitions for review will be filed in the electronic field, 30% in
the mechanical field, and 20% in the chemical or design fields.
Preparation of the petition would require analyzing the patent
claims, locating evidence supporting arguments of unpatentability, and
preparing the petition seeking review of the patent. This notice
provides the proposed procedural requirements that are common for the
new trials. Additional requirements are provided in contemporaneous
trial specific proposed rulemaking. The procedures for petitions to
institute an inter partes review are proposed in § 42.5, 42.6,
42.8, 42.11, 42.13, 42.20, 42.21, 42.22, 42.24(a)(1), 42.63, 42.65, and
42.101 through 42.105.
The skills necessary to prepare a petition for review and to
participate in a trial before the Patent Trial and Appeal Board would
be similar to those needed to prepare a request for inter partes
reexamination, to represent a party in an inter partes reexamination,
and to represent a party in an interference proceeding before the
Patent Trial and Appeal Board. This level of skill is typically
possessed by a registered patent practitioner having devoted
professional time to the particular practice area, typically under the
supervision of a practitioner skilled in the particular practice area.
Where authorized by the Board, a non-registered practitioner may be
admitted pro hac vice, on a case-by-case basis based on the facts and
circumstances of the trial and party, as well as the skill of the
practitioner.
The cost of preparing a petition for inter partes review is
anticipated to be the same as the cost for preparing a request for
inter partes reexamination. The American Intellectual Property Law
Association's AIPLA Report of the Economic Survey 2011 reported that
the average cost of preparing a request for inter partes reexamination
was $46,000. Based on the work required to prepare and file such a
request, the Office considers the reported cost as a reasonable
estimate. Accordingly, the Office estimates that the cost of preparing
a petition for inter partes review would be $46,000 (including expert
costs).
The filing of a petition for review would also require payment by
the petitioner of the appropriate petition fee to recover the aggregate
cost for providing the review. The appropriate petition fee would be
determined by the number of claims for which review is sought and the
type of review. The proposed fees for filing a petition for inter
partes review are: $27,200 for requesting review of 20 or fewer claims,
$34,000 to request review of 21 to 30 claims, $40,800 to request review
of 31 to 40 claims, $54,400 to request review of 41 to 50 claims,
$68,000 to request review of 51 to 60 claims, and an additional $27,200
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to request review of additional groups of 10 claims.
In setting fees, the estimated information technology cost to
establish the process and maintain the filing and storage system
through 2017 is to be recovered by charging each petition $2,270. The
remainder of the fee is to recover the cost for judges to determine
whether to institute a review and conduct the review, together with a
proportionate share of indirect costs, e.g., rent, utilities,
additional support, and administrative costs. Based on the direct and
indirect costs, the fully burdened cost per hour for judges to decide a
petition and conduct a review is estimated to be $258.32.
For a petition for inter partes review with 20 or fewer challenged
claims, it is anticipated that 97 hours of judge time would be
required. For 21 to 30 challenged claims, an additional 24 hours is
anticipated for a total of 121 hours of judge time. For 31 to 40
challenged claims, an additional 48 hours is anticipated for a total of
145 hours of judge time. For 41 to 50 challenged claims, an additional
97 hours is anticipated for a total of 194 hours of judge time. For 51
to 60 claims, an additional 145 hours is anticipated for a total of 242
hours of judge time. The increase in adjustment reflects the added
complexity that typically occurs as more claims are in dispute.
The proposed rules would permit the patent owner to file a
preliminary response to the petition setting forth the reasons why no
review should be initiated. The procedures for a patent owner to file a
preliminary response as an opposition are proposed in § 42.6,
42.8, 42.11, 42.13, 42.21, 42.23, 42.24(b), 42.51, 42.52, 42.53, 42.54,
42.63, 42.64, 42.65, 42.107, 42.120, 42.207, and 42.220. The patent
owner is not required to file a preliminary response. The Office
estimates that the preparation and filing of a patent owner preliminary
response would require 100 hours of professional time and cost $34,000
(including expert costs). The AIPLA Report of the Economic Survey 2011
reported that the average cost for inter partes reexamination including
of the request ($46,000), the first patent owner response, and third
party comments was $75,000 (see I-175) and the median billing rate for
professional time of $340 per hour for attorneys in private firms (see
8). Thus, the cost of the first patent owner reply and the third party
statement is $29,000. The Office finds these costs to be reasonable
estimates. The patent owner reply and third party statement, however,
occur after the examiner has made an initial threshold determination
and made only the appropriate rejections. Accordingly, it is
anticipated that filing a patent owner preliminary response to a
petition for review would cost more than the initial reply in a
reexamination, an estimated $34,000 (including expert costs).
The Office will determine whether to institute a trial within three
months after the earlier of: (1) The submission of a patent owner
preliminary response, (2) the waiver of filing a patent owner
preliminary response, or (3) the expiration of the time period for
filing a patent owner preliminary response. If the Office decides not
to institute a trial, the petitioner may file a request for
reconsideration of the Office's decision. It is anticipated that a
request for reconsideration will require 80 hours of professional time
to prepare and file, for a cost of $27,200. This estimate is based on
the complexity of the issues and desire to avoid time bars imposed by
35 U.S.C. 315(b), as amended, and 35 U.S.C. 325(b).
Following institution of a trial, the parties may be authorized to
file various motions, e.g., motions to amend and motions for additional
discovery. Where a motion is authorized, an opposition may be
authorized, and where an opposition is authorized, a reply may be
authorized. The procedures for filing a motion are proposed in
§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.22, 42.24(a)(5), 42.51,
42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.121, 42.221, 42.123, and
42.223. The procedures for filing an opposition are proposed in
§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.23, 42.24(b), 42.51,
42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.107, 42.120, 42.207, and
42.220. The procedures for filing a reply are proposed in §§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.23, 42.24(c), 42.51, 42.52, 42.53,
42.54, 42.63, and 42.65. As discussed previously, the Office estimates
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that the average inter partes review will have 6.92 motions,
oppositions, and replies after institution.
The AIPLA Report of the Economic Survey 2011 reported that the
average cost in contested cases before the trial section of the Board
prior to the priority phase was $322,000 per party. Because of the
overlap of issues in patentability grounds, it is expected that the
cost per motion will decline as more motions are filed in a proceeding.
It is estimated that a motion, opposition, or reply in an inter partes
review is estimated at $47,600 (including expert costs). Based on the
work required to file and prepare such briefs, the Office considers the
reported cost as a reasonable estimate.
After a trial has been instituted but prior to a final written
decision, parties to a review may request an oral hearing. The
procedure for filing requests for oral argument is proposed in
§ 42.70. The AIPLA Report of the Economic Survey 2011 reported that the
third quartile cost of an ex parte appeal with an oral argument is
$12,000, while the third quartile cost of an ex parte appeal without an
oral argument is $6,000. In view of the reported costs, which the
Office finds reasonable, and the increased complexity of an oral
hearing with multiple parties, it is estimated that the cost per party
for oral hearings would be $6,800 or $800 more than the reported third
quartile cost for an ex parte oral hearing.
Parties to an inter partes review may file requests to treat a
settlement as business confidential and requests for adverse judgment.
A written request to make a settlement agreement available may also be
filed. The procedures to file requests that a settlement be treated as
business confidential are proposed in § 42.74(c). The procedures to
file requests for adverse judgment are proposed in § 42.73(b). The
procedures to file requests to make a settlement agreement available
are proposed in § 42.74(c)(2). It is anticipated that requests to
treat a settlement as business confidential will require two hours of
professional time or $680. It is anticipated that requests for adverse
judgment will require one hour of professional time or $340. It is
anticipated that requests to make a settlement agreement available will
require 1 hour of professional time or $340. The requests to make a
settlement agreement available will also require payment of a fee of
$400 specified in proposed § 42.15(d).
Parties to a review proceeding may seek judicial review of the
judgment of the Board. The procedures to file notices of judicial
review of a Board decision, including notices of appeal and notices of
election provided for 35 U.S.C. 141, 142, 145, and 146, are proposed in
§ 90.1 through 90.3. The submission of a copy of a notice of
appeal or a notice of election is anticipated to require six minutes of
professional time at a cost of $34.
5. Description of Any Significant Alternatives to the Proposed
Rules Which Accomplish the Stated Objectives of Applicable Statutes and
Which Minimize Any Significant Economic Impact of the Rules on Small
Entities:
Size of petitions and motions: The Office considered whether to
apply a page limit and what an appropriate page limit would be. The
Office does not currently have a page limit on inter partes
reexamination requests. The inter partes reexamination requests from
October 1, 2010, to June 30, 2011, averaged 246 pages. Based on the
experience of processing inter partes reexamination requests, the
Office finds that the very large size of the requests has created a
burden on the Office that hinders the efficiency and timeliness of
processing the requests, and creates a burden on patent owners. The
quarterly reported average processing time from the filing of a request
to the publication of a reexamination certificate ranged from 28.9
months to 41.7 months in fiscal year 2009, from 29.5 months to 37.6
months in fiscal year 2010, and from 31.9 to 38.0 months in fiscal year
2011. See Reexaminations - FY 2011, http://www.uspto.gov/patents/
Reexamination_operational_statistic_through_FY2011Q4.pdf.
By contrast, the Office has a page limit on the motions filed in
contested cases, except where parties are specifically authorized to
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exceed the limitation. The typical contested case proceeding is subject
to a standing order that sets a 50 page limit for motions and
oppositions on priority, a 15 page limit for miscellaneous motions
(§ 41.121(a)(3)) and oppositions (§ 41.122), and a 25 page
limit for other motions (§ 41.121(a)(2)) and oppositions to other
motions. In typical proceedings, replies are subject to a 15 page limit
if directed to priority, 5 page limit for miscellaneous issues, and 10
page limit for other motions. The average contested case was terminated
in 10.1 months in fiscal year 2009, in 12 months in fiscal year 2010,
and in 9 months in fiscal year 2011. The percentage of contested cases
terminated within two years was 93.7% in fiscal year 2009, 88.0% in
fiscal year 2010, and 94.0% in fiscal year 2011. See BPAI Statistics -
Performance Measures,
http://www.uspto.gov/ip/boards/bpai/stats/perform/index.jsp.
Comparing the average time period for terminating a contested case,
10.0 to 12.0 months, with the average time period, during fiscal years
2009 through 2011, for completing an inter partes reexamination, 28.9
to 41.7 months, indicates that the average interference takes from 24%
(10.0/41.7) to 42% (12.0/28.9) of the time of the average inter partes
reexamination. While several factors contribute to the reduction in
time, limiting the size of the requests and motions is considered a
significant factor. Proposed § 42.24 would provide page limits for
petitions, motions, oppositions, and replies. 35 U.S.C. 316(b), as
amended, provides considerations that are to be taken into account when
prescribing regulations including the integrity of the patent system,
the efficient administration of the Office, and the ability to complete
timely the trials. The page limits proposed in these rules are consistent
with these considerations.
Federal courts routinely use page limits in managing motions
practice as "[e]ffective writing is concise writing." Spaziano v.
Singletary, 36 F.3d 1028, 1031 n.2 (11th Cir. 1994). Many district
courts restrict the number of pages that may be filed in a motion
including, for example, the District of Delaware, the District of New
Jersey, the Eastern District of Texas, the Northern, Central, and
Southern Districts of California, and the Eastern District of Virginia.
Federal courts have found that page limits ease the burden on both
the parties and the courts, and patent cases are no exception. Eolas
Techs., Inc. v. Adobe Sys., Inc., No. 6:09-CV-446, at 1 (E.D. Tex.
Sept. 2, 2010) ("The Local Rules' page limits ease the burden of
motion practice on both the Court and the parties."); Blackboard, Inc.
v. Desire2Learn, Inc., 521 F. Supp. 2d 575, 576 (E.D. Tex. 2007) (The
parties "seem to share the misconception, popular in some circles,
that motion practice exists to require federal judges to shovel through
steaming mounds of pleonastic arguments in a Herculean effort to
uncover a hidden gem of logic that will ineluctably compel a favorable
ruling. Nothing could be farther from the truth."); Broadwater v.
Heidtman Steel Prods., Inc., 182 F. Supp. 2d 705, 710 (S.D. Ill. 2002)
("Counsel are strongly advised, in the future, to not ask this Court
for leave to file any memoranda (supporting or opposing dispositive
motions) longer than 15 pages. The Court has handled complicated patent
cases and employment discrimination cases in which the parties were
able to limit their briefs supporting and opposing summary judgment to
10 or 15 pages." (Emphasis omitted)).
The Board's contested cases experience with page limits in motions
practice is consistent with that of the federal courts. The Board's use
of page limits has shown it to be beneficial without being unduly
restrictive for the parties. Page limits have encouraged the parties to
focus on dispositive issues, easing the burden of motions practice on
the parties and on the Board.
The Board's contested cases experience with page limits is informed
by its use of different approaches over the years. In the early 1990s,
page limits were not routinely used for motions, and the practice
suffered from lengthy and unacceptable delays. To reduce the burden on
the parties and on the Board and thereby reduce the time to decision,
the Board instituted page limits in the late 1990s for every motion.
Page limit practice was found to be effective in reducing the burdens
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on the parties and improving decision times at the Board. In 2006, the
Board revised the page limit practice and allowed unlimited findings of
fact and generally limited the number of pages containing argument. Due
to abuses of the system, the Board recently reverted back to page
limits for the entire motion (both argument and findings of fact).
The Board's current page limits are consistent with the 25-page
limits in the Northern, Central, and Southern Districts of California
and the Middle District of Florida and exceed the limits in the
District of Delaware (20), the Northern District of Illinois (15), the
District of Massachusetts (20), the Eastern District of Michigan (20),
the Southern District of Florida (20), and the Southern District of
Illinois (20).
In a typical proceeding before the Board, a party may be authorized
to file a single motion for unpatentability based on prior art, a
single motion for unpatentability based upon failure to comply with 35
U.S.C. 112, lack of written description, and/or enablement, and
potentially another motion for lack of compliance with 35 U.S.C. 101,
although a 35 U.S.C. 101 motion may be required to be combined with the
35 U.S.C. 112 motion. Each of these motions is currently limited to 25
pages in length, unless good cause is shown that the page limits are
unduly restrictive for a particular motion.
Under the proposed rules, an inter partes review petition would be
based upon any grounds identified in 35 U.S.C. 311(b), as amended,
i.e., only a ground that could be raised under 35 U.S.C. 102 or 103 and
only on the basis of patents or printed publications. Generally, under
current practice, a party is limited to filing a single prior art
motion, limited to 25 pages in length. The proposed rule would provide
up to 50 pages in length for a motion requesting inter partes review.
Thus, as the proposed page limit doubles the default page limit
currently set for a motion before the Board, a 50 page limit is
considered sufficient in all but exceptional cases and is consistent
with the considerations provided in 35 U.S.C. 316(b), as amended.
The proposed rule would provide that petitions to institute a trial
must comply with the stated page limits but may be accompanied by a
motion that seeks to waive the page limits. The petitioner must show in
the motion how a waiver of the page limits is in the interests of
justice. A copy of the desired non-page limited petition must accompany
the motion. Generally, the Board would decide the motion prior to
deciding whether to institute the trial.
Current Board practice provides a limit of 25 pages for other
motions and 15 pages for miscellaneous motions. The Board's experience
is that such page limits are sufficient for the parties filing them and
do not unduly burden the opposing party or the Board. Petitions to
institute a trial would generally replace the current practice of
filing motions for unpatentability, as most motions for relief are
expected to be similar to the current interference miscellaneous motion
practice. Accordingly, the proposed 15 page limit is considered
sufficient for most motions but may be adjusted where the limit is
determined to be unduly restrictive for the relief requested.
Proposed § 42.24(b) would provide page limits for oppositions
filed in response to motions. Current contested cases practice provides
an equal number of pages for an opposition as its corresponding motion.
This is generally consistent with motions practice in federal courts.
The proposed rule would continue the current practice.
Proposed § 42.24(c) would provide page limits for replies.
Current contested case practice provides a 15 page limit for priority
motion replies, a 5 page limit for miscellaneous (procedural) motion
replies, and a 10 page limit for all other motions. The proposed rule
is consistent with current contested case practice for procedural
motions. The proposed rule would provide a 15 page limit for reply to
petitions requesting a trial, which the Office believes is sufficient
based on current practice. Current contested case practice has shown
that such page limits do not unduly restrict the parties and, in fact,
have provided sufficient flexibility to parties to not only reply to
the motion but also help to focus on the issues. Thus, it is
anticipated that default page limits would minimize the economic impact
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on small entities by focusing on the issues in the trials.
The Leahy-Smith America Invents Act requires that the Director, in
prescribing rules for the inter partes reviews, consider the effect of
the rules on the economy, the integrity of the patent system, the
efficient administration of the Office, and the ability of the Office
to complete timely the instituted proceedings. See 35 U.S.C. 316(b), as
amended. In view of the actual results of the duration of proceedings
in inter partes reexamination (without page limits) and contested cases
(with page limits), proposing procedures with reasonable page limits would
be consistent with the objectives set forth in the Leahy-Smith America
Invents Act. Based on our experience on the time needed to complete a
non-page limited proceeding, the option of non-page limited proceedings was
not adopted.
Fee Setting: 35 U.S.C. 311(a), as amended, requires the Director to
establish fees to be paid by the person requesting the review in such
amounts as the Director determines to be reasonable, considering the
aggregate costs of the review. In contrast to current 35 U.S.C. 311(b)
and 312(c), the Leahy-Smith America Invents Act requires the Director
to establish more than one fee for reviews based on the total cost of
performing the reviews, and does not provide for refund of any part of
the fee when the Director determine that the review should not be
initiated.
35 U.S.C. 312(a)(1), as amended, further requires that the fee
established by the Director under 35 U.S.C. 311(a), as amended,
accompany the petition on filing. Accordingly, in interpreting the fee
setting authority in 35 U.S.C. 311(a), as amended, it is reasonable
that the Director should set a number of fees for filing a petition
based on the anticipated aggregate cost of conducting the review
depending on the complexity of the review, and require payment of the
fee upon filing of the petition.
Based on experience with contested cases and inter partes
reexamination proceedings, the following characteristics of requests
were considered as potential factors for fee setting as each would
likely impact the cost of providing the new services. The Office also
considered the relative difficulty in administrating each option in
selecting the characteristics for which different fees should be paid
for requesting review.
I. Adopted Option. Number of claims for which review is requested.
The number of claims often impacts the complexity of the request and
increases the demands placed on the deciding officials. Cf. In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1309 (Fed.
Cir. 2011) (limiting number of asserted claims is appropriate to
efficiently manage a case). Moreover, the number of claims for which
review is requested can be easily determined and administered, which
avoids delays in the Office and the impact on the economy or patent
system that would occur if an otherwise meritorious request is refused
due to improper fee payment. Any subsequent petition would be time
barred in view 35 U.S.C. 315(b), as amended.
II. Alternative Option I. Number of grounds for which review is
requested. The Office has experience with large numbers of cumulative
grounds being presented in inter partes reexaminations which often add
little value to the proceedings. Allowing for a large number of grounds
to be presented on payment of an additional fee(s) is not favored.
Determination of the number of grounds in a request may be contentious
and difficult and may result in a large amount of high-level petition
work. As such, the option would have a negative impact on small
entities. Moreover, interferences instituted in the 1980s and early
1990s suffered from this problem as there was no page limit for motions
and the parties had little incentive to focus the issues for decision.
The resulting interference records were often a collection of disparate
issues and evidence. This led to lengthy and unwarranted delays in
deciding interference cases as well as increased costs for parties and
the Office. Accordingly, this alternative is inconsistent with
objectives of the Leahy-Smith America Invents Act that the Director, in
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prescribing rules for the inter partes reviews, consider the effect of
the rules on the economy, the integrity of the patent system, the
efficient administration of the Office, and the ability of the Office
to timely complete the instituted proceedings.
III. Alternative Option II. Pages of argument. The Office has
experience with large requests in inter partes reexamination in which
the merits of the proceedings could have been resolved in a shorter
request. Allowing for unnecessarily large requests on payment of an
additional fee(s) is not favored. Moreover, determination of what
should be counted as "argument" as compared with "evidence" has
often proven to be contentious and difficult as administered in the
current inter partes reexamination appeal process.
In addition, the trial section of the Board recently experimented
with motions having a fixed page limit for the argument section and an
unlimited number of pages for the statement of facts. Unlimited pages
for the statement of facts led to a dramatic increase in the number of
alleged facts and pages associated with those facts. For example, one
party used approximately 10 pages for a single "fact" that merely cut
and pasted a portion of a declarant's cross-examination. Based upon the
trial section's experience with unlimited pages of facts, the Board
recently reverted back to a fixed page limit for the entire motion
(argument and facts). Accordingly, this alternative is inconsistent
with objectives of the Leahy-Smith America Invents Act that the
Director, in prescribing rules for the inter partes patent reviews,
consider the effect of the rules on the economy, the integrity of the
patent system, the efficient administration of the Office, and the
ability of the Office to complete timely the instituted proceedings.
IV. Alternative Option III. The Office considered an alternative
fee setting regime in which fees are charged at various steps in the
review process, a first fee on filing of the petition, a second fee if
instituted, a third fee on filing a motion in opposition to amended
claims, etc. The alternative fee setting regime would hamper the
ability of the Office to complete timely reviews, would result in
dismissal of pending proceedings with patentability in doubt due to
non-payment of required fees by third parties, and would be
inconsistent with 35 U.S.C. 312, as amended, that requires the fee
established by the Director be paid at the time of filing the petition.
Accordingly, this alternative is inconsistent with objectives of the
Leahy-Smith America Invents Act that the Director, in prescribing rules
for inter partes reviews, consider the effect of the rules on the
economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to complete
timely the instituted proceedings.
V. Alternative Option IV. The Office also considered setting
reduced fees for small and micro entities and to provide refunds if a
review is not instituted. The Office may set the fee to recover the
cost of providing the services under 35 U.S.C. 41(d)(2)(a). Fees set
under this authority are not reduced for small entities, see 35 U.S.C.
42(h)(1), as amended. Moreover, the Office does not have authority to
refund fees that when paid were not paid by mistake or in excess of
that owed. See 35 U.S.C. 42(d).
Discovery: The Office considered a procedure for discovery similar
to the one available during district court litigation. Discovery of
that scope has been criticized sharply, particularly when attorneys use
discovery tools as tactical weapons, which hinders the "just, speedy,
and inexpensive determination of every action and proceeding." See
Introduction to An E-Discovery Model Order, available at
http://www.cafc.uscourts.gov/images/stories/announcements/Ediscovery_
Model_Order.pdf. Accordingly, this alternative would have been inconsistent
with objectives of the Leahy-Smith America Invents Act that the
Director, in prescribing rules for the inter partes reviews, consider
the effect of the rules on the economy, the integrity of the patent system,
the efficient administration of the Office, and the ability of the Office
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to complete timely the instituted proceedings.
Additional discovery increases trial costs and increases the
expenditures of time by the parties and the Board. To promote effective
discovery, the proposed rule would require a showing that additional
requested discovery is in the interests of justice, placing an
affirmative burden upon a party seeking the discovery to show how the
proposed discovery would be productive. The Board's interference
experience, however, is that such showings are often lacking and
authorization for additional discovery is expected to be rare.
The proposed interest of justice standard for additional discovery
is consistent with considerations identified in 35 U.S.C. 316(b), as
amended, including the efficient administration of the Board and the
Board's ability to complete timely trials. Further, the proposed
interest of justice standard is consistent with 35 U.S.C. 316(a)(5), as
amended, which states that discovery other than depositions of
witnesses submitting affidavits and declarations be what is otherwise
necessary in the interests of justice.
The Office has proposed a default scheduling order to provide
limited discovery as a matter of right and also the ability to seek
additional discovery on a case-by-case basis. In weighing the need for
additional discovery, should a request be made, the economic impact on
the opposing party would be considered which would tend to limit
additional discovery where a party is a small entity.
Pro Hac Vice: The Office considered whether to allow counsel to
appear pro hac vice. In certain cases, highly skilled, but non-
registered, attorneys have appeared satisfactorily before the Board in
contested cases. The Board may recognize counsel pro hac vice during a
proceeding upon a showing of good cause. Proceedings before the Office
can be technically complex. Consequently, the grant of a motion to
appear pro hac vice is a discretionary action taking into account the
specifics of the proceedings. Similarly, the revocation of pro hac vice
is a discretionary action taking into account various factors,
including incompetence, unwillingness to abide by the Office's Rules of
Professional Conduct, prior findings of misconduct before the Office in
other proceedings, and incivility.
The Board's past practice has required the filing of a motion by a
registered patent practitioner seeking pro hac vice representation
based upon a showing of: (1) How qualified the unregistered
practitioner is to represent the party in the proceeding when measured
against a registered practitioner, and (2) whether the party has a
genuine need to have the particular unregistered practitioner represent
it during the proceeding. This practice has proven effective in the
limited number of contested cases where such requests have been
granted. The proposed rule, if adopted, would allow for this practice
in the new proceedings authorized by the Leahy-Smith America Invents
Act.
The proposed rules would provide a limited delegation to the Board
under 35 U.S.C. 2(b)(2) and 32 to regulate the conduct of counsel in
Board proceedings. The proposed rule would delegate to the Board the
authority to conduct counsel disqualification proceedings while the
Board has jurisdiction over a proceeding. The rule would also delegate
to the Chief Administrative Patent Judge the authority to make final a
decision to disqualify counsel in a proceeding before the Board for the
purposes of judicial review. This delegation would not derogate from
the Director the prerogative to make such decisions, nor would it
prevent the Chief Administrative Patent Judge from further delegating
authority to an administrative patent judge.
The Office considered broadly permitting practitioners not
registered to practice by the Office to represent parties in trial as
well as categorically prohibiting such practice. A prohibition on the
practice would be inconsistent with the Board's experience, and more
importantly, might result in increased costs particularly where a small
entity has selected its district court litigation team for
representation before the Board and has a patent review filed after
litigation efforts have commenced. Alternatively, broadly making the
practice available would create burdens on the Office in administering
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the trials and in completing the trial within the established time
frame, particularly if the selected practitioner does not have the
requisite skill. In weighing the desirability of admitting a
practitioner pro hac vice, the economic impact on the party in interest
would be considered which would tend to increase the likelihood that a
small entity could be represented by a non-registered practitioner.
Accordingly, the alternatives to eliminate pro hac vice practice or to
permit it more broadly would have been inconsistent with objectives of
the Leahy-Smith America Invents Act that the Director, in prescribing
rules for the inter partes reviews, consider the effect of the rules on
the economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to complete
timely the instituted proceedings.
Threshold for Instituting a Review: The Office considered whether
the threshold for instituting a review could be set as low as or lower
than the threshold for ex parte reexamination. This alternative could
not be adopted in view of the statutory requirements in 35 U.S.C. 314,
as amended.
Default Electronic Filing: The Office considered a paper filing
system and a mandatory electronic filing system (without any
exceptions) as alternatives to the proposed requirement that all papers
are to be electronically filed, unless otherwise authorized.
Based on the Office's experience, a paper-based filing system
increases delay in processing papers, delay in public availability, and
the chance that a paper may be misplaced or made available to an
improper party if confidential. Accordingly, the alternative of a
paper-based filing system would have been inconsistent with objectives
of the Leahy-Smith America Invents Act that the Director, in
prescribing rules for the inter partes reviews, consider the effect of
the rules on the economy, the integrity of the patent system, the
efficient administration of the Office, and the ability of the Office
to complete timely the instituted proceedings.
An electronic filing system (without any exceptions) that is
rigidly applied would result in unnecessary cost and burdens,
particularly where a party lacks the ability to file electronically. By
contrast, if the proposed option is adopted, it is expected that the
entity size and sophistication would be considered in determining
whether alternative filing methods would be authorized.
6. Identification, to the Extent Practicable, of All Relevant
Federal Rules Which May Duplicate, Overlap, or Conflict with the
Proposed Rules:
37 CFR 1.99 provides for the submission of information after
publication of a patent application during examination by third
parties.
37 CFR 1.171-1.179 provide for applications to reissue a patent to
correct errors, including where a claim in a patent is overly broad.
37 CFR 1.291 provides for the protest against the issuance of a
patent during examination.
37 CFR 1.321 provides for the disclaimer of a claim by a patentee.
37 CFR 1.501 and 1.502 provide for ex parte reexamination of
patents. Under these rules, a person may submit to the Office prior art
consisting of patents or printed publications that are pertinent
to the patentability of any claim of a patent, and request
reexamination of any claim in the patent on the basis of the cited
prior art patents or printed publications. Consistent with 35 U.S.C.
302-307, ex parte reexamination rules provide a different threshold for
initiation, require the proceeding to be conducted by an examiner with
a right of appeal to the Patent Trial and Appeal Board, and allow for
limited participation by third parties.
37 CFR 1.902-1.997 provide for inter partes reexamination of
patents. Similar to ex parte reexamination, inter partes reexamination
provides a procedure in which a third party may request reexamination
of any claim in a patent on the basis of the cited prior art patents
and printed publication. The inter partes reexamination practice will
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be eliminated, except for requests filed before the effective date,
September 16, 2012. See § 6(c)(3)(C) of the Leahy-Smith America
Invents Act.
Other countries have their own patent laws, and an entity desiring
a patent in a particular country must make an application for patent in
that country, in accordance with the applicable law. Although the
potential for overlap exists internationally, this cannot be avoided
except by treaty (such as the Paris Convention for the Protection of
Industrial Property, or the Patent Cooperation Treaty (PCT)).
Nevertheless, the Office believes that there are no other duplicative
or overlapping foreign rules.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be significant for purposes of
Executive Order 12866 (Sept. 30, 1993), as amended by Executive Order
13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007).
The Office estimates that the aggregate burden of the proposed
rules on the public for implementing the new review procedures is
approximately $54.1 million for fiscal year 2013. The USPTO considered
several factors in making this estimate.
Based on the petition and other filing requirements for initiating
an inter partes review proceeding, the USPTO initially estimated the
burden of the proposed rules to be $174,500,217 in fiscal year 2013,
which represents the sum of the estimated total annual (hour)
respondent cost burden ($158,025,744) plus the estimated total annual
non-hour respondent cost burden ($16,474,473) provided in Part O,
Section II, of this notice, infra. However, since the Leahy-Smith
America Invents Act also eliminates inter partes reexamination practice
(except for requests filed before the effective date of September 16,
2012), the burden of the proposed rules should be offset by the
elimination of the proceeding and its associated burdens.
It is estimated that 460 new requests for inter partes
reexamination would have been filed in FY 2012 if the Leahy-Smith
America Invents Act had not been enacted. This estimate is based on the
number of proceedings filed in fiscal years 2011 (374), 2010 (281), and
2009 (258). Elimination of 460 proceedings reduces the public's burden
to pay filing fees by $4,048,000 (460 filings with $8,800 filing fee
due) and the public's burden to prepare the requests by $21,160,000
(460 filings with $46,000 average cost to prepare). Based on the
assumption that 93% of the requests would be ordered (consistent with
the fiscal year 2011 grant rate), the burden to conduct the proceeding
till close of prosecution will reduce the public's burden by
$89,880,000 (428 proceedings that would be estimated to be granted
reexamination multiplied by $210,000 which is average cost cited in the
AIPLA Report of the Economic Survey 2011 per party cost until close of
prosecution reduced by the $46,000 request preparation cost).
Additionally, the burden on the public to appeal to the Board by
$5,358,000 (based on an estimate that 141 proceedings would be appealed
to the Board which is estimated based on the number of granted
proceedings (428) and the historical rate of appeal to the Board (1-3)
and an average public cost of $38,000). Thus, $120,446,000 in
public burden will be eliminated by the elimination of new filings of
inter partes reexamination (the sum of $4,048,000 (the filing fees),
$21,160,000 (the cost of preparing requests), $89,880,000 (the
prosecution costs), plus $5,358,000 (the burden to appeal to the
Board)).
Therefore, the estimated aggregate burden of the proposed rules for
implementing the new review proceedings would be $54,054,217
($174,500,217 minus $120,446,000) in fiscal year 2013.
The USPTO expect several benefits to flow from the Leahy-Smith
America Invents Act and these proposed rules. It is anticipated that
the proposed rules will reduce the time for reviewing patents at the
USPTO. Specifically, 35 U.S.C. 316(a), as amended, provides that the
Director prescribe regulations requiring a final determination by the
Board within one year of initiation, which may be extended for up to
six months for good cause. In contrast, currently for inter partes
reexamination, the average time from the filing to the publication of a
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certificate ranged from 28.9 to 41.7 months during fiscal years 2009-
2011. See Reexamination - FY 2011, http://www.uspto.gov/patents/
Reexamination_operational_statistic_through_FY2011Q4.pdf.
Likewise, it is anticipated that the proposed rules will minimize
duplication of efforts. In particular, the Leahy-Smith America Invents
Act provides more coordination between district court infringement
litigation and inter partes review to reduce duplication of efforts and
costs. For instance, 35 U.S.C. 315(b), as amended, will require that a
petition for inter partes review be filed within one year of the date
of service of a complaint alleging infringement of a patent. By
requiring the filing of an inter partes review petition earlier than a
request for inter partes reexamination, and by providing shorter
timelines for inter partes review compared with reexamination, it is
anticipated that the current high level of duplication between
litigation and reexamination will be reduced.
The AIPLA Report of the Economic Survey 2011 reports that the total
cost of patent litigation where the damages at risk are less than
$1,000,000 average $916,000, where the damages at risk are between
$1,000,000 and $25,000,000 average $2,769,000, and where the damages at
risk exceed $25,000,000 average $6,018,000. There may be a significant
reduction in overall burden if, as intended, the Leahy-Smith America
Invents Act and the proposed rules reduce the overlap between review at
the USPTO of issued patents and validity determination during patent
infringement actions. Data from the United States district courts
reveals that 2,830 patent cases were filed in 2006, 2,896 in 2007,
2,909 in 2008, 2,792 in 2009, and 3,301 in 2010. See U.S. Courts,
Judicial Business of the United States Courts, www.uscourts.gov/uscourts/
Statistics/JudicialBusiness/2010/appendices/C02ASep10.pdf
(last visited Nov. 11, 2011) (hosting annual reports for 1997-2010).
Thus, the Office estimates that a total of approximately 3,300 patent
cases (the highest number of yearly filings between 2006 and 2010
rounded to the nearest 100) are likely to be filed annually. The
aggregate burden estimate above ($54,054,144) was not offset by a
reduction in burden based on improved coordination between district
court patent litigation and the new inter partes review proceedings.
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs of
the rule; (2) tailored the rule to impose the least burden on society
consistent with obtaining the regulatory objectives; (3) selected a
regulatory approach that maximizes net benefits; (4) specified performance
objectives; (5) identified and assessed available alternatives; (6) involved
the public in an open exchange of information and perspectives among experts
in relevant disciplines, affected stakeholders in the private sector, and
the public as a whole, and provided online access to the rule making
docket; (7) attempted to promote coordination, simplification, and
harmonization across government agencies and identified goals designed
to promote innovation; (8) considered approaches that reduce burdens
and maintain flexibility and freedom of choice for the public; and (9)
ensured the objectivity of scientific and technological information and
processes.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
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G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996). This rulemaking carries out a
statute designed to lessen litigation. See H.R. Rep. No. 112-98, at 45-
48.
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not effect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801-808), prior to issuing any final rule, the United
States Patent and Trademark Office will submit a report containing the
final rule and other required information to the U.S. Senate, the U.S.
House of Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this notice are not expected to
result in an annual effect on the economy of 100 million dollars or
more, a major increase in costs or prices, or significant adverse
effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign based enterprises in domestic and export markets.
Therefore, this notice is not expected to result in a "major rule" as
defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes proposed in
this notice do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501-1571.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321-4370h.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501-3549) requires that the USPTO consider the impact of
paperwork and other information collection burdens imposed on the
public. This proposed rulemaking involves information collection
requirements which are subject to review by the Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C.
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3501-3549). The collection of information involved in this notice has
been submitted to OMB under OMB control number 0651-00xx. In the Notice
"Rules of Practice for Trials before the Patent Trial and Appeal Board
and Judicial Review of Patent Trial and Appeal Board Decisions," RIN
0651-AC70, the information collection for all of the new trials
authorized by the Leahy-Smith America Invents Act were provided. This
notice provides the subset of burden created by the inter partes review
provisions. The proposed collection will be available at the OMB's
Information Collection Review Web site at: www.reginfo.gov/public/do/PRAMain.
The USPTO is submitting the information collection to OMB for its
review and approval because this notice of proposed rulemaking will add
the following to a collection of information:
(1) Petitions to institute an inter partes review (§ 42.5,
42.6, 42.8, 42.11, 42.13, 42.20, 42.21, 42.22, 42.24(a)(1), 42.63,
42.65, and 42.101 through 42.105);
(2) motions (§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.22,
42.24(a)(5), 42.51 through 42.54, 42.63, 42.64, 42.65, and 42.121);
(3) oppositions (§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.23,
42.24(b), 42.51, 42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.107, and
42.120); and
(4) replies provided for in 35 U.S.C. 135 and 311-318, as amended,
and new 35 U.S.C. 319 (§ 42.6, 42.8, 42.11, 42.13, 42.21,
42.23, 42.24(c), 42.51, 42.52, 42.53, 42.54, 42.63, and 42.65).
The proposed rules also permit filing requests for oral argument
(§ 42.70) provided for in 35 U.S.C. 316(a)(10), as amended,
requests for rehearing (§ 42.71(c)), requests for adverse judgment
(§ 42.73(b)), requests that a settlement be treated as business
confidential (§ 42.74(b)) provided for in 35 U.S.C. 317, as amended.
I. Abstract: The USPTO is required by 35 U.S.C. 131 and 151 to
examine applications and, when appropriate, issue applications as
patents.
Chapter 31 of title 35, United States Code, in effect on September
16, 2012, provides for inter partes review proceedings allowing third
parties to petition the USPTO to review the patentability of an issued
patent under 35 U.S.C. 102 and 103 based on patents and printed
publications. If a trial is initiated by the USPTO based on the
petition, as authorized by the USPTO, additional motions may be filed
by the petitioner. A patent owner may file a response to the petition
and if a trial is instituted, as authorized by the USPTO, may file
additional motions.
In estimating the number of hours necessary for preparing a
petition to institute an inter partes review, the USPTO considered the
estimated cost of preparing a request for inter partes reexamination
($46,000), the median billing rate ($340/hour), and the observation
that the cost of inter partes reexamination has risen the fastest of
all litigation costs since 2009 in the AIPLA Report of the Economic
Survey 2011. It was estimated that a petition for an inter partes
review and an inter partes reexamination request would cost the same to
the preparing party ($46,000).
In estimating the number of hours necessary for preparing motions
after instituting and participating in the review, the USPTO considered
the AIPLA Report of the Economic Survey 2011 which reported the average
cost of a party to a two-party interference to the end of the
preliminary motion phase ($322,000) and inclusive of all costs
($631,000). The Office considered that the preliminary motion phase is
a good proxy for patentability reviews since that is the period of
current contested cases before the trial section of the Board where
most patentability motions are currently filed.
The USPTO also reviewed recent contested cases before the trial
section of the Board to make estimates on the average number of motions
for any matter including priority, the subset of those motions directed
to non-priority issues, the subset of those motions directed to non-
priority patentability issues, and the subset of those motions directed
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to patentability issues based on a patent or printed publication on the
basis of 35 U.S.C. 102 or 103. The review of current contested cases
before the trial section of the Board indicated that approximately 15%
of motions were directed to prior art grounds, 18% of motions were
directed to other patentability grounds, 27% were directed to
miscellaneous issues, and 40% were directed to priority issues. It was
estimated that the cost per motion to a party in current contested
cases before the trial section of the Board declines because of overlap
in subject matter, expert overlap, and familiarity with the technical
subject matter. Given the overlap of subject matter, a proceeding with
fewer motions will have a somewhat less than proportional decrease in
costs since the overlapping costs will be spread over fewer motions.
It is estimated that the cost of an inter partes review would be
60% of the cost of current contested cases before the trial section of
the Board to the end of the preliminary motion period. An inter partes
review should have many fewer motions since only one party will have a
patent that is the subject of the proceeding (compared with each party
having at least a patent or an application in current contested cases
before the trial section of the Board). Moreover, fewer issues can be
raised since inter partes review will not have priority-related issues
that must be addressed in current contested cases before the trial
section of the Board. Consequently, a 60% weighting factor should
capture the typical costs of an inter partes review.
The title, description, and respondent description of the
information collection are shown below with an estimate of the annual
reporting burdens for the inter partes review provisions. Included in
this estimate is the time for reviewing instructions, gathering and
maintaining the data needed, and completing and reviewing the
collection of information. The principal impact of the proposed changes
in this notice of proposed rulemaking is to implement the changes to
Office practice necessitated by section 6(a) of the Leahy-Smith America
Invents Act.
The public uses this information collection to request inter partes
review and to ensure that the associated fees and documentation are
submitted to the USPTO.
II. Data
Needs and Uses: The information supplied to the USPTO by a petition
to institute an inter partes review as well as the motions authorized
following the institution is used by the USPTO to determine whether to
initiate a review under 35 U.S.C. 314, as amended, and to prepare a
final decision under 35 U.S.C. 318, as amended.
OMB Number: 0651-00xx.
Title: Patent Review and Derivation Proceedings.
Form Numbers: None.
Type of Review: New Collection.
Likely Respondents/Affected Public: Individuals or households,
businesses, or other for-profit, not-for-profit institutions, farms,
Federal Government, and state, local, or tribal governments.
Estimated Number of Respondents/Frequency of Collection: 920
respondents and 4,024 responses per year.
Estimated Time per Response: The USPTO estimates that it will take
the public from 0.1 to 180.4 hours to gather the necessary information,
prepare the documents, and submit the information to the USPTO.
Estimated Total Annual Respondent Burden Hours: 464,781.6 hours per
year.
Estimated Total Annual (Hour) Respondent Cost Burden: $158,025,744
per year. The USPTO expects that the information in this collection
will be prepared by attorneys. Using the professional rate of $340 per
hour for attorneys in private firms, the USPTO estimates that the
respondent cost burden for this collection will be approximately
$158,025,744 per year (464,781.6 hours per year multiplied by $340 per
hour).
Estimated Total Annual Non-hour Respondent Cost Burden: $16,474,473
per year. There are no capital start-up or maintenance costs associated
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with this information collection. However, this collection does have
annual (non-hour) costs in the form of filing fees and postage costs
where filing via mail is authorized. It is estimated that filing via
mail will be authorized in one inter partes review petition filing and
3 subsequent papers. There are filing fees associated with petitions
for inter partes review, post-grant review, and covered business method
patent review and for requests to treat a settlement as business
confidential. The total filing fees for this collection are calculated
in the accompanying table. The USPTO estimates that filings authorized
to be filed via mail will be mailed to the USPTO by Express Mail using
the U.S. Postal Service's flat rate envelope, which can accommodate
varying submission weights, estimated in this case to be 16 ounces for
the petitions and two ounces for the other papers. The cost of the flat
rate envelope is $18.30. The USPTO estimates that the total postage
cost associated with this collection will be approximately $73 per
year. The USPTO estimates that the total fees associated with this
collection will be approximately $16,474,473 per year.
Therefore, the total cost burden in fiscal year 2013 is estimated
to be $174,500,217 (the sum of the estimated total annual (hour)
respondent cost burden ($158,025,744) plus the estimated total annual
non-hour respondent cost burden ($16,474,473)).
Estimated Estimated
time for Estimated annual
response annual burden
Item (hours) responses hours
Petition for inter partes 135.3 460 62,238
review
Reply to initial inter 100 406 40,600
partes review petition
Request for Reconsideration 80 127 10,160
Motions, replies, 140 2,453 343,420
and oppositions after
institution in inter
partes review
Request for oral hearing 20 411 8,220
Request to treat a settlement 2 16 32
as business confidential
Request for adverse judgment, 1 91 91
default adverse judgment,
or settlement
Request to make a settlement 1 16 16
agreement available
Notice of judicial review of 0.1 46 4.6
a Board decision (e.g.,
notice of appeal under 3
5 U.S.C. 142)
Totals 4,026 464,781.6
Estimated
Estimated annual
annual filing
Item responses Fee Amount costs
Petition for inter partes 460 $35,800 $16,468,000
review
Reply to inter partes 406 0 0
review petition
Request for Reconsideration 127 0 0
Motions, replies, and 2,453 0 0
oppositions after
initiation in inter
partes review
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Request for oral hearing 411 0 0
Request to treat a settlement 16 0 0
as business confidential
Request for adverse judgment, 91 0 0
default adverse judgment,
or settlement
Request to make a settlement 16 400 6,400
agreement available
Notice of judicial review of 46 0 0
a Board decision (e.g.,
notice of appeal under
35 U.S.C. 142)
Totals 4,026 16,474,400
III. Solicitation
The agency is soliciting comments to: (1) Evaluate whether the
proposed information requirement is necessary for the proper
performance of the functions of the agency, including whether the
information will have practical utility; (2) evaluate the accuracy of
the agency's estimate of the burden; (3) enhance the quality, utility,
and clarity of the information to be collected; and (4) minimize the
burden of collecting the information on those who are to respond,
including by using appropriate automated, electronic, mechanical, or
other technological collection techniques or other forms of information
technology.
Interested persons are requested to send comments regarding this
information collection by April 10, 2012, to: (1) The Office of
Information and Regulatory Affairs, Office of Management and Budget,
New Executive Office Building, Room 10202, 725 17th Street NW.,
Washington, DC 20503, Attention: Nicholas A. Fraser, the Desk Officer
for the United States Patent and Trademark Office, and via email at
nfraser@omb.eop.gov; and (2) The Board of Patent Appeals and
Interferences by electronic mail message over the Internet addressed to
inter_partes_review@uspto.gov, or by mail addressed to: Mail Stop
Patent Board, Director of the United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of "Lead Judge Michael Tierney, Inter partes Review Proposed
Rules."
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 42
Administrative practice and procedure, Inventions and patents,
Lawyers.
Proposed Amendments to the Regulatory Text
For the reasons stated in the preamble, the Under Secretary of
Commerce for Intellectual Property and Director of the United States
Patent and Trademark Office propose to amend 37 CFR part 42 as proposed
to be added in the February 9, 2012, issue of the Federal Register as
follows:
PART 42 - TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
1. The authority citation for 37 CFR part 42 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312,
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316, 321-326 and Leahy-Smith America Invents Act, Pub. L. 112-29,
sections 6(c), 6(f), and 18, 125 Stat. 284, 304, 311, and 329
(2011).
2. Add subpart B to read as follows:
Subpart B - Inter Partes Review
General
§
42.100 Procedure; pendency.
42.101 Who may petition for inter partes review.
42.102 Time for filing.
42.103 Inter partes review fee.
42.104 Content of petition.
42.105 Service of petition.
42.106 Filing date.
42.107 Preliminary response to petition.
Instituting Inter Partes Review
42.108 Institution of inter partes review.
After Institution of Inter Partes Review
42.120 Patent owner response.
42.121 Amendment of the patent.
42.122 Multiple proceedings.
42.123 Filing of supplemental information.
Subpart B - Inter Partes Review
General
§ 42.100 Procedure; pendency.
(a) An inter partes review is a trial subject to the procedures set
forth in subpart A of this part.
(b) A claim in an unexpired patent shall be given its broadest
reasonable construction in light of the specification of the patent in
which it appears.
(c) An inter partes review proceeding shall be administered such
that pendency before the Board after institution is normally no more
than one year. The time can be extended by up to six months for good
cause by the Chief Administrative Patent Judge.
§ 42.101 Who may petition for inter partes review.
A person who is not the owner of a patent may file with the Office
a petition to institute an inter partes review of the patent unless:
(a) Before the date on which the petition for review is filed, the
petitioner or real party in interest filed a civil action challenging
the validity of a claim of the patent;
(b) The petition requesting the proceeding is filed more than one
year after the date on which the petitioner, the petitioner's real
party in interest, or a privy of the petitioner is served with a
complaint alleging infringement of the patent; or
(c) The petitioner, the petitioner's real party in interest, or a
privy of the petitioner is estopped from challenging the claims on the
grounds identified in the petition.
§ 42.102 Time for filing.
(a) A petition for inter partes review of a patent must be filed
after the later of:
(1) The date that is nine months after the date of the grant of the
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patent or of the issuance of the reissue patent; or
(2) If a post-grant review is instituted as set forth in subpart C
of this part, the date of the termination of such post-grant review.
(b) The Director may impose a limit on the number of inter partes
reviews that may be instituted during each of the first four one-year
periods in which the amendment made to chapter 31 of title 35, United
States Code, is in effect by providing notice in the Office's Official
Gazette or Federal Register. Petitions filed after an established limit
has been reached will be deemed untimely.
§ 42.103 Inter partes review fee.
(a) An inter partes review fee set forth in § 42.15(a) must
accompany the petition.
(b) No filing date will be accorded to the petition until full
payment is received.
§ 42.104 Content of petition.
In addition to the requirements of § 42.8 and 42.22, the
petition must set forth:
(a) Grounds for standing. The petitioner must certify that the
patent for which review is sought is available for inter partes review
and that the petitioner is not barred or estopped from requesting an
inter partes review of the patent.
(b) Identification of challenge. Provide a statement of the precise
relief requested for each claim challenged. The statement must identify
the following:
(1) The claim;
(2) The specific statutory grounds under 35 U.S.C. 102 or 103 on
which the challenge to the claim is based and the patents or printed
publications relied upon for each ground;
(3) How the challenged claim is to be construed. Where the claim to
be construed contains a means-plus-function or step-plus-function
limitation as permitted under 35 U.S.C. 112, sixth paragraph, the
construction of the claim must identify the specific portions of the
specification that describe the structure, material, or acts
corresponding to each claimed function;
(4) How the construed claim is unpatentable under the statutory
grounds identified in paragraph (b)(2) of this section. The petition
must specify where each element of the claim is found in the prior art
patents or printed publications relied upon; and
(5) The exhibit number of the supporting evidence relied upon to
support the challenge and state the relevance of the evidence to the
challenge raised, including identifying specific portions of the
evidence that support the challenge. The Board may exclude or give no
weight to the evidence where a party has failed to state its relevance
or to identify specific portions of the evidence that support the
challenge.
(c) A motion may be filed that seeks to correct a clerical or
typographical mistake in the petition. The grant of such a motion does
not change the filing date of the petition.
§ 42.105 Service of petition.
In addition to the requirements of § 42.6, the petitioner must
serve the petition and exhibits relied upon in the petition as follows:
(a) The petition and supporting evidence must be served on the
patent owner at the correspondence address of record for the subject
patent. The petitioner may additionally serve the petition and
supporting evidence on the patent owner at any other address known to
the petitioner as likely to effect service.
(b) If the petitioner cannot effect service of the petition and
supporting evidence on the patent owner at the correspondence address
of record for the subject patent, the petitioner must immediately
contact the Board to discuss alternate modes of service.
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§ 42.106 Filing date.
(a) Complete petition. A petition to institute inter partes review
will not be accorded a filing date until the petition satisfies all of
the following requirements:
(1) Complies with § 42.104;
(2) Service of the petition on the correspondence address of record
as provided in § 42.105(a); and
(3) Is accompanied by the fee to institute required in §
42.15(a).
(b) Incomplete petition. Where a party files an incomplete
petition, no filing date will be accorded, and the Office will dismiss
the petition if the deficiency in the petition is not corrected within
one month from the notice of an incomplete petition.
§ 42.107 Preliminary response to petition.
(a) The patent owner may file a preliminary response to the
petition. The response is limited to setting forth the reasons why no
inter partes review should be instituted under 35 U.S.C. 314. The
response can include evidence except as provided in paragraph (c) of
this section. The preliminary response is an opposition for purposes of
determining page limits under § 42.24.
(b) Due date. The preliminary response must be filed no later than
two months after the date of a notice indicating that the request to
institute an inter partes review has been granted a filing date. A
patent owner may expedite the proceeding by filing an election to waive
the preliminary patent owner response.
(c) No new testimonial evidence. The preliminary response shall not
present new testimony evidence beyond that already of record.
(d) No amendment. The preliminary response shall not include any
amendment.
(e) Disclaim Patent Claims. The patent owner may file a statutory
disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a),
disclaiming one or more claims in the patent. No inter partes review
will be instituted based on disclaimed claims.
Instituting Inter Partes Review
§ 42.108 Institution of inter partes review.
(a) When instituting inter partes review, the Board may authorize
the review to proceed on all or some of the challenged claims and on
all or some of the grounds of unpatentability asserted for each claim.
(b) At any time prior to institution of inter partes review, the
Board may deny some or all grounds for unpatentability for some or all
of the challenged claims. Denial of a ground is a Board decision not to
institute inter partes review on that ground.
(c) Sufficient grounds. Inter partes review shall not be instituted
for a ground of unpatentability unless the Board decides that the
petition supporting the ground would, if unrebutted, demonstrate that
there is a reasonable likelihood that at least one of the claims
challenged in the petition is unpatentable. The Board's decision will
take into account a preliminary patent owner response where such a
response is filed.
After Institution of Inter Partes Review
§ 42.120 Patent owner response.
(a) Scope. A patent owner may file a response to the petition
addressing any ground for unpatentability not already denied. A patent
owner response is filed as an opposition and is subject to the page
limits provided in § 42.24.
(b) Due date for response. If no time for filing a patent owner
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response to a petition is provided in a Board order, the default date
for filing a patent owner response is two months from the date the
inter partes review was instituted.
§ 42.121 Amendment of the patent.
(a) A patent owner may file one motion to amend a patent but only
after conferring with the Board. Any additional motions to amend may
not be filed without Board authorization.
(b) A motion to amend must set forth:
(1) The support in the original disclosure of the patent for each
claim that is added or amended; and
(2) The support in an earlier filed disclosure for each claim for
which benefit of the filing date of the earlier filed disclosure is
sought.
(c) A motion to amend the claims of a patent will not be authorized
where:
(1) The amendment does not respond to a ground of unpatentability
involved in the trial; or
(2) The amendment seeks to enlarge the scope of the claims of the
patent or introduce new subject matter.
§ 42.122 Multiple proceedings.
Where another matter involving the patent is before the Office, the
Board may during the pendency of the inter partes review enter any
appropriate order regarding the additional matter including providing
for the stay, transfer, consolidation, or termination of any such
matter.
§ 42.123 Filing of supplemental information.
Once a trial has been instituted, a petitioner may request
authorization to file a motion identifying supplemental information
relevant to a ground for which the trial has been instituted. The
request must be made within one month of the date the trial is
instituted.
January 31, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
| Changes to Implement Post-Grant Review Proceedings |
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 42
[Docket No. PTO-P-2011-0084]
RIN 0651-AC72
Changes to Implement Post-Grant Review Proceedings
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office or
USPTO) proposes new rules to implement the provisions of the Leahy-
Smith America Invents Act that create a new post-grant review
proceeding to be conducted before the Patent Trial and Appeal Board
(Board). These provisions of the Leahy-Smith America Invents Act will
take effect on September 16, 2012, one year after the date of
enactment, and generally apply to patents issuing from applications
subject to first-inventor-to-file provisions of the Leahy-Smith America
Invents Act.
DATES: The Office solicits comments from the public on this proposed
rulemaking. Written comments must be received on or before April 10,
2012 to ensure consideration.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: post_grant_review@uspto.gov. Comments may also
be submitted by postal mail addressed to: Mail Stop Patent Board,
Director of the United States Patent and Trademark Office, P.O. Box
1450, Alexandria, VA 22313-1450, marked to the attention of "Lead
Judge Michael Tierney, Post-Grant Review Proposed Rules."
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov/) for additional
instructions on providing comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments are preferred to be submitted in
plain text, but also may be submitted in ADOBE® portable
document format or MICROSOFT WORD® format. Comments not
submitted electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE® portable
document format.
The comments will be available for public inspection at the Board
of Patent Appeals and Interferences, currently located in Madison East,
Ninth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also
will be available for viewing via the Office's Internet Web site
(http://www.uspto.gov/). Because comments will be made available for
public inspection, information that the submitter does not desire to
make public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Michael Tierney, Lead Administrative
Patent Judge, Sally Lane, Administrative Patent Judge, Scott Boalick,
Lead Administrative Patent Judge, and Robert Clarke, Administrative
Patent Judge, Board of Patent Appeals and Interferences, by telephone
at (571) 272-9797.
SUPPLEMENTARY INFORMATION: On September 16, 2011, the Leahy-Smith
America Invents Act was enacted into law (Pub. L. 112-29, 125 Stat. 284
(2011)). The purpose of the Leahy-Smith America Invents Act and these
proposed regulations is to establish a more efficient and streamlined
patent system that will improve patent quality and limit unnecessary
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and counterproductive litigation costs. The preamble of this notice
sets forth in detail the procedures by which the Board will conduct
post-grant review proceedings. The USPTO is engaged in a transparent
process to create a timely, cost-effective alternative to litigation.
Moreover, the rulemaking process is designed to ensure the integrity of
the trial procedures. See 35 U.S.C. 326(b). The proposed rules would
provide a set of rules relating to Board trial practice for post-grant
review.
More grounds for seeking post-grant review will be available as
compared with inter partes review. The grounds for seeking post-grant
review includes any ground that could be raised under 35 U.S.C.
282(b)(2) or (3). Such grounds for post-grant review include grounds
that could be raised under 35 U.S.C. 102 or 103 including those based
on prior art consisting of patents or printed publications. Other
grounds available for post-grant review include 35 U.S.C. 101 and 112,
with the exception of compliance with the best mode requirement. In
contrast, the grounds for seeking inter partes review are limited to
issues raised under 35 U.S.C. 102 or 103 and only on the basis of prior
art consisting of patents or printed publications.
Section 6 of the Leahy-Smith America Invents Act is entitled
"POST-GRANT REVIEW PROCEEDINGS." Section 6(d) of the Leahy-Smith
America Invents Act, entitled "POST-GRANT REVIEW," adds chapter 32 of
title 35, United States Code, also entitled "POST-GRANT REVIEW." In
particular, § 6(d) adds 35 U.S.C. 321-329. Public Law 112-29, 125
Stat. 284, 305-311 (2011).
Section 6(d) of the Leahy-Smith America Invents Act adds 35 U.S.C.
321, entitled "Post-grant review." 35 U.S.C. 321(a) will provide
that, subject to the provisions of chapter 32 of title 35, United
States Code, a person who is not the owner of a patent may file a
petition with the Office to institute a post-grant review of the
patent. 35 U.S.C. 321(a) will also provide that the Director will
establish, by regulation, fees to be paid by the person requesting the
review, in such amounts as the Director determines to be reasonable,
considering the aggregate costs of the post-grant review. 35 U.S.C.
321(b) will provide that a petitioner in a post-grant review may
request to cancel as unpatentable one or more claims of a patent on any
ground that could be raised under 35 U.S.C. 282(b)(2) or (3) (relating
to invalidity of the patent or any claim). 35 U.S.C. 321(c) will
provide that a petition for post-grant review may only be filed not
later than the date that is nine months after the date of the grant of
the patent or of the issuance of a reissue patent.
Section 6(d) of the Leahy-Smith America Invents Act adds 35 U.S.C.
322, entitled "Petitions." 35 U.S.C. 322(a) will provide that a
petition filed under 35 U.S.C. 321 may be considered only if: (1) The
petition is accompanied by payment of the fee established by the
Director under 35 U.S.C. 321; (2) the petition identifies all real
parties in interest; (3) the petition identifies, in writing and with
particularity, each claim challenged, the grounds on which the
challenge to each claim is based, and the evidence that supports the
grounds for the challenge to each claim, including (A) copies of
patents and printed publications that the petitioner relies upon in
support of the petition and (B) affidavits or declarations of
supporting evidence and opinions, if the petitioner relies on other
factual evidence or on expert opinions; (4) the petition provides such
other information as the Director may require by regulation; and (5)
the petitioner provides copies of any of the documents required under
paragraphs (2), (3), and (4) of 35 U.S.C. 322(a) to the patent owner
or, if applicable, the designated representative of the patent owner.
35 U.S.C. 322(b) will provide that, as soon as practicable after the
receipt of a petition under 35 U.S.C. 321, the Director will make the
petition available to the public.
Section 6(d) of the Leahy-Smith America Invents Act adds 35 U.S.C.
323, entitled "Preliminary response to petition." 35 U.S.C. 323 will
provide that, if a post-grant review petition is filed under 35 U.S.C.
321, the patent owner has the right to file a preliminary response to
the petition, within a time period set by the Director, that sets forth
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reasons why no post-grant review should be instituted based upon the
failure of the petition to meet any requirement of chapter 32 of title
35, United States Code.
Section 6(d) of the Leahy-Smith America Invents Act adds 35 U.S.C.
324, entitled "Institution of post-grant review." 35 U.S.C. 324(a)
will provide that the Director may not authorize a post-grant review to
be instituted, unless the Director determines that the information
presented in the petition filed under 35 U.S.C. 321, if such
information is not rebutted, would demonstrate that it is more likely
than not that at least one of the claims challenged in the petition is
unpatentable. 35 U.S.C. 324(b) will provide that the determination
required under 35 U.S.C. 324(a) may also be satisfied by a showing that
the petition raises a novel or unsettled legal question that is
important to other patents or patent applications. 35 U.S.C. 324(c)
will provide that the Director will determine whether to institute a
post-grant review under chapter 32 of title 35, United States Code,
pursuant to a petition filed under 35 U.S.C. 321 within three months
after: (1) Receiving a preliminary response to the petition under 35
U.S.C. 323; or (2) if no such preliminary response is filed, the last
date on which such response may be filed. 35 U.S.C. 324(d) will provide
that the Director will notify the petitioner and patent owner, in
writing, of the Director's determination under 35 U.S.C. 324(a) or (b),
and will make such notice available to the public as soon as is
practicable. 35 U.S.C. 324(d) will also provide that such notice will
include the date on which the review will commence. 35 U.S.C. 324(e)
will provide that the determination by the Director whether to
institute a post-grant review under 35 U.S.C. 324 will be final and
nonappealable.
Section 6(d) of the Leahy-Smith America Invents Act adds 35 U.S.C.
325, entitled "Relation to other proceedings or actions." 35 U.S.C.
325(a)(1) will provide that a post-grant review may not be instituted
under chapter 32 of title 35, United States Code, if, before the date
on which the petition for such a review is filed, the petitioner or
real party in interest filed a civil action challenging the validity of
a claim of the patent. 35 U.S.C. 325(a)(2) will provide for an
automatic stay of a civil action brought by the petitioner or real
party in interest challenging the validity of a claim of the patent and
filed on or after the date on which the petition for post-grant review
was filed, until certain specified conditions are met. 35 U.S.C.
325(a)(3) will provide that a counterclaim challenging the validity of
a claim of a patent does not constitute a civil action challenging the
validity of a claim of a patent for purposes of 35 U.S.C. 325(a).
35 U.S.C. 325(b) will provide that if a civil action alleging
infringement of a patent is filed within three months after the date on
which the patent is granted, the court may not stay its consideration
of the patent owner's motion for a preliminary injunction against
infringement of the patent on the basis that a petition for post-grant
review has been filed or instituted under chapter 32 of title 35,
United States Code.
35 U.S.C. 325(c) will provide that if more than one petition for a
post-grant review under chapter 32 of title 35, United States Code, is
properly filed against the same patent and the Director determines that
more than one of these petitions warrants the institution of a post-
grant review under 35 U.S.C. 324, the Director may consolidate such
reviews into a single post-grant review.
35 U.S.C. 325(d) will provide that, notwithstanding 35 U.S.C. 135(a),
251, and 252, and chapter 30 of title 35, United States Code, during the
pendency of any post-grant review under chapter 32 of title 35, United
States Code, if another proceeding or matter involving the patent is
before the Office, the Director may determine the manner in which the
post-grant review or other proceeding or matter may proceed, including
providing for the stay, transfer, consolidation, or termination of any
such matter or proceeding. 35 U.S.C. 325(d) will also provide that, in
determining whether to institute or order a proceeding under chapter 32
of title 35, United States Code, chapter 30 of title 35, United States
Code, or chapter 31 of title 35, United States Code, the Director may
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take into account whether, and reject the petition because, the same or
substantially the same prior art or arguments previously were presented
to the Office.
35 U.S.C. 325(e)(1) will provide that the petitioner in a post-
grant review of a claim in a patent under chapter 32 of title 35,
United States Code, that results in a final written decision under 35
U.S.C. 328(a), or the real party in interest or privy of the
petitioner, may not request or maintain a proceeding before the Office
with respect to that claim on any ground that the petitioner raised or
reasonably could have raised during that post-grant review. 35 U.S.C.
325(e)(2) will provide for estoppel against a post-grant review
petitioner, or the real party in interest or privy of the petitioner,
in certain civil actions and certain other proceedings before the
International Trade Commission if that post-grant review results in a
final written decision under 35 U.S.C. 328(a).
35 U.S.C. 325(f) will provide that a post-grant review may not be
instituted under chapter 32 of title 35, United States Code, if the
petition requests cancellation of a claim in a reissue patent that is
identical to or narrower than a claim in the original patent from which
the reissue patent was issued, and the time limitations in 35 U.S.C.
321(c) would bar filing a petition for a post-grant review for such
original patent.
Section 6(d) of the Leahy-Smith America Invents Act adds 35 U.S.C.
326, entitled "Conduct of post-grant review." 35 U.S.C. 326(a) will
provide that the Director will prescribe regulations: (1) Providing
that the file of any proceeding under chapter 32 of title 35, United
States Code, will be made available to the public, except that any
petition or document filed with the intent that it be sealed will, if
accompanied by a motion to seal, be treated as sealed pending the
outcome of the ruling on the motion; (2) setting forth the standards
for the showing of sufficient grounds to institute a review under 35
U.S.C. 324(a) and (b); (3) establishing procedures for the submission
of supplemental information after the petition is filed; (4)
establishing and governing a post-grant review under chapter 32 of
title 35, United States Code, and the relationship of such review to
other proceedings under title 35, United States Code; (5) setting forth
standards and procedures for discovery of relevant evidence, including
that such discovery will be limited to evidence directly related to
factual assertions advanced by either party in the proceeding; (6)
prescribing sanctions for abuse of discovery, abuse of process, or any
other improper use of the proceeding, such as to harass or to cause
unnecessary delay or an unnecessary increase in the cost of the
proceeding; (7) providing for protective orders governing the exchange
and submission of confidential information; (8) providing for the
filing by the patent owner of a response to the petition under 35
U.S.C. 323 after a post-grant review has been instituted, and requiring
that the patent owner file with such response, through affidavits or
declarations, any additional factual evidence and expert opinions on
which the patent owner relies to support the response; (9) setting
forth standards and procedures for allowing the patent owner to move to
amend the patent under 35 U.S.C. 326(d) to cancel a challenged claim or
propose a reasonable number of substitute claims, and ensuring that any
information submitted by the patent owner in support of any amendment
entered under 35 U.S.C. 326(d) is made available to the public as part
of the prosecution history of the patent; (10) providing either party
with the right to an oral hearing as part of the proceeding; (11)
requiring that the final determination in any post-grant review be
issued not later than one year after the date on which the Director
notices the institution of a proceeding under chapter 32 of title 35,
United States Code, except that the Director may, for good cause shown,
extend the one-year period by not more than six months, and may adjust
the time periods in this paragraph in the case of joinder under 35
U.S.C. 325(c); and (12) providing the petitioner with at least one
opportunity to file written comments within a time period established
by the Director.
35 U.S.C. 326(b) will provide that in prescribing regulations under
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35 U.S.C. 326, the Director will consider the effect of any such
regulation on the economy, the integrity of the patent system, the
efficient administration of the Office, and the ability of the Office
to complete timely proceedings instituted under chapter 32 of title 35,
United States Code.
35 U.S.C. 326(c) will provide that the Patent Trial and Appeal
Board will, in accordance with 35 U.S.C. 6, conduct each post-grant
review instituted under chapter 32 of title 35, United States Code.
35 U.S.C. 326(d)(1) will provide that during a post-grant review
instituted under chapter 32 of title 35, United States Code, the patent
owner may file a single motion to amend the patent in one or more of
the following ways: (A) Cancel any challenged patent claim; and/or (B)
for each challenged claim, propose a reasonable number of substitute
claims. 35 U.S.C. 326(d)(2) provides that additional motions to amend
may be permitted upon the joint request of the petitioner and the
patent owner to materially advance the settlement of a proceeding under
35 U.S.C. 327, or upon the request of the patent owner for good cause
shown. 35 U.S.C. 326(d)(3) will provide that an amendment under 35
U.S.C. 326(d) may not enlarge the scope of the claims of the patent or
introduce new matter. 35 U.S.C. 326(e) will provide that in a post-
grant review instituted under chapter 32 of title 35, United States
Code, the petitioner will have the burden of proving a proposition of
unpatentability by a preponderance of the evidence.
Section 6(d) of the Leahy-Smith America Invents Act adds 35 U.S.C.
327, entitled "Settlement." 35 U.S.C. 327(a) will provide that a
post-grant review instituted under chapter 32 of title 35, United
States Code, will be terminated with respect to any petitioner upon the
joint request of the petitioner and the patent owner, unless the Office
has decided the merits of the proceeding before the request for
termination is filed. 35 U.S.C. 327(a) will also provide that if the
post-grant review is terminated with respect to a petitioner under 35
U.S.C. 327, no estoppel under 35 U.S.C. 325(e) will attach to the
petitioner, or to the real party in interest or privy of the
petitioner, on the basis of that petitioner's institution of that post-
grant review. 35 U.S.C. 327(a) will further provide that if no
petitioner remains in the post-grant review, the Office may terminate
the post-grant review or proceed to a final written decision under 35
U.S.C. 328(a).
35 U.S.C. 327(b) will provide that any agreement or understanding
between the patent owner and a petitioner, including any collateral
agreements referred to in such agreement or understanding, made in
connection with, or in contemplation of, the termination of a post-
grant review under 35 U.S.C. 327 will be in writing, and a true copy of
such agreement or understanding will be filed in the Office before the
termination of the post-grant review as between the parties. 35 U.S.C.
327(b) will also provide that at the request of a party to the proceeding,
the agreement or understanding will be treated as business confidential
information, will be kept separate from the file of the involved patents,
and will be made available only to Federal Government agencies on written
request, or to any person on a showing of good cause.
Section 6(d) of the Leahy-Smith America Invents Act adds 35 U.S.C.
328, entitled "Decision of the Board." 35 U.S.C. 328(a) will provide
that if a post-grant review is instituted and not dismissed under
chapter 32 of title 35, United States Code, the Patent Trial and Appeal
Board will issue a final written decision with respect to the
patentability of any patent claim challenged by the petitioner and any
new claim added under 35 U.S.C. 326(d).
35 U.S.C. 328(b) will provide that if the Patent Trial and Appeal
Board issues a final written decision under 35 U.S.C. 328(a) and the
time for appeal has expired or any appeal has terminated, the Director
will issue and publish a certificate canceling any claim of the patent
finally determined to be unpatentable, confirming any claim of the
patent determined to be patentable, and incorporating in the patent by
operation of the certificate any new or amended claim determined to be
patentable.
35 U.S.C. 328(c) will provide that any proposed amended or new
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claim determined to be patentable and incorporated into a patent
following a post-grant review under chapter 32 of title 35, United
States Code, will have the same effect as that specified in 35 U.S.C.
252 for reissued patents on the right of any person who made,
purchased, or used within the United States, or imported into the
United States, anything patented by such proposed amended or new claim,
or who made substantial preparation therefor, before the issuance of a
certificate under 35 U.S.C. 328(b).
35 U.S.C. 328(d) will provide that the Office will make available
to the public data describing the length of time between the
institution of, and the issuance of, a final written decision under 35
U.S.C. 328(a) for each post-grant review.
Section 6(d) of the Leahy-Smith America Invents Act adds 35 U.S.C.
329, entitled "Appeal." 35 U.S.C. 329 will provide that a party
dissatisfied with the final written decision of the Patent Trial and
Appeal Board under 35 U.S.C. 328(a) may appeal the decision pursuant to
35 U.S.C. 141-144. 35 U.S.C. 329 will also provide that any party to
the post-grant review will have the right to be a party to the appeal.
Section 6(f) of the Leahy-Smith America Invents Act is entitled
"REGULATIONS AND EFFECTIVE DATE." Section 6(f)(1) of the Leahy-Smith
America Invents Act provides that the Director will, not later than the
date that is one year after the date of the enactment of the Leahy-
Smith America Invents Act, issue regulations to carry out chapter 32 of
title 35, United States Code, as added by § 6(d) of the Leahy-Smith
America Invents Act.
Section 6(f)(2)(A) of the Leahy-Smith America Invents Act provides
that the amendments made by § 6(d) of the Leahy-Smith America
Invents Act will take effect upon the expiration of the one-year period
beginning on the date of the enactment of the Leahy-Smith America
Invents Act and, except as provided in § 18 of the America Invents
Act and in § 6(f)(3) of the Leahy-Smith America Invents Act, will
apply only to patents described in § 3(n)(1) of the Leahy-Smith
America Invents Act. Section 3(n) of the Leahy-Smith America Invents
Act is entitled "EFFECTIVE DATE." Section 3(n)(1) of the Leahy-Smith
America Invents Act provides:
(n) EFFECTIVE DATE. -
(1) IN GENERAL. - Except as otherwise provided in this section,
the amendments made by this section shall take effect upon the
expiration of the 18-month period beginning on the date of the
enactment of this Act, and shall apply to any application for
patent, and to any patent issuing thereon, that contains or
contained at any time -
(A) a claim to a claimed invention that has an effective filing
date as defined in section 100(i) of title 35, United States Code,
that is on or after the effective date described in this paragraph;
or
(B) a specific reference under section 120, 121, or 365(c) of
title 35, United States Code, to any patent or application that
contains or contained at any time such a claim.
For example, the post-grant review provisions will apply to patents
issued from applications that have an effective filing date on or after
March 16, 2013, eighteen months after the date of enactment.
Section 6(f)(2)(B) of the Leahy-Smith America Invents Act provides
that the Director may impose a limit on the number of post-grant
reviews that may be instituted under chapter 32 of title 35, United
States Code, during each of the first four one-year periods in which
the amendments made by § 6(d) of the Leahy-Smith America Invents
Act are in effect.
Section 6(f)(3) of the Leahy-Smith America Invents Act is entitled
"PENDING INTERFERENCES." Section 6(f)(3)(A) of the Leahy-Smith
America Invents Act provides that the Director will determine, and
include in the regulations issued under § 6(f)(1) of the Leahy-
Smith America Invents Act, the procedures under which an interference
commenced before the effective date set forth in § 6(f)(2)(A) of
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the Leahy-Smith America Invents Act is to proceed, including whether
such interference: (i) is to be dismissed without prejudice to the
filing of a petition for a post-grant review under chapter 32 of title
35, United States Code; or (ii) is to proceed as if the Leahy-Smith
America Invents Act had not been enacted.
Section 6(f)(3)(B) of the Leahy-Smith America Invents Act provides
that, for purposes of an interference that is commenced before the
effective date set forth in § 6(f)(2)(A) of the Leahy-Smith America
Invents Act, the Director may deem the Patent Trial and Appeal Board to
be the Board of Patent Appeals and Interferences, and may allow the
Patent Trial and Appeal Board to conduct any further proceedings in
that interference.
Section 6(f)(3)(C) of the Leahy-Smith America Invents Act provides
that the authorization to appeal or have remedy from derivation
proceedings in §§ 141(d) and 146 of title 35, United States
Code, as amended, and the jurisdiction to entertain appeals from
derivation proceedings in 28 U.S.C. 1295(a)(4)(A), as amended, will be
deemed to extend to any final decision in an interference that is
commenced before the effective date set forth in § 6(f)(2)(A) of
the Leahy-Smith America Invents Act and that is not dismissed pursuant
to this paragraph.
Discussion of Specific Rules
The proposed new rules would implement the provisions of the Leahy-
Smith America Invents Act for instituting and conducting post-grant
review proceedings before the Patent Trial and Appeal Board (Board). 35
U.S.C. 326(a)(4), as added by the Leahy-Smith America Invents Act,
provides that the Director will prescribe regulations establishing and
governing post-grant review and the relationship of the review to other
proceedings under title 35 of the United States Code. Public Law 112-
29, § 6(d), 125 Stat. 284, 308 (2011). In particular, this notice
proposes to add a new subpart C to 37 CFR part 42 to provide rules
specific to post-grant reviews.
Additionally, the Office in a separate rulemaking is proposing to add
part 42, including subpart A, (RIN 0651-AC70) that will include a
consolidated set of rules relating to Board trial practice. Specifically,
the proposed subpart A of part 42 would set forth the policies, practices,
and definitions common to all trial proceedings before the Board. The
proposed rules in the instant notice and discussion below may reference
the proposed rules in subpart A of part 42. Furthermore, the Office in
separate rulemakings is proposing to add a new subpart B to 37 CFR part
42 (RIN 0651-AC71) to provide rules specific to inter partes reviews, a
new subpart D to 37 CFR part 42 (RIN 0651-AC73; RIN 0651-AC75) to
provide rules specific to the transitional program for covered business
method patents, and a new subpart E to 37 CFR part 42 (RIN 0651-AC74)
to provide rules specific to derivation proceedings.
Title 37 of the Code of Federal Regulations, Chapter I, Part 42,
Subpart C, entitled "Post-Grant Review" is proposed to be added as
follows:
Section 42.200: Proposed § 42.200 would set forth policy
considerations for post-grant review proceedings.
Proposed § 42.200(a) would provide that a post-grant review is
a trial and subject to the rules set forth in subpart A.
Proposed § 42.200(b) would provide that a claim in an unexpired
patent shall be given its broadest reasonable construction in light of
the specification in which it appears. This proposed rule would be
consistent with longstanding established principles of claim
construction before the Office. In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004); In re Yamamoto, 740 F.2d 1569, 1571
(Fed. Cir. 1984). As explained in Yamamoto, a party's ability to amend
claims to avoid prior art distinguishes Office proceedings from
district court proceedings and justifies the difficult standard for
claim interpretation. Yamamoto, 740 F.2d at 1572.
Proposed § 42.200(c) would provide a one-year timeframe for
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administering the proceeding after institution, with up to a six-month
extension for good cause. This proposed rule is consistent with 35
U.S.C. 326(a)(11), which sets forth statutory time frames for post-
grant review.
Proposed § 42.200(d) would provide that interferences commenced
within one year of enactment of the Leahy-Smith America Invents Act
shall proceed under part 41 of 37 CFR except as the Chief
Administrative Patent Judge may otherwise order in the interests of
justice. The expectation is that dismissal will be rarely, if ever,
ordered. Hence, any case where such an order arises would be
exceptional and should be handled as its circumstances require. This
proposed rule is consistent with § 6(f)(3) of the Leahy-Smith
America Invents Act, which provides that the Director shall include in
regulations the procedures under which an interference commenced before
the effective date of the act is to proceed.
Section 42.201: Proposed § 42.201 would provide who may file a
petition for post-grant review.
Proposed § 42.201(a) would provide that a person who is not the
patent owner may file a petition to institute a post-grant review,
unless the petitioner or real party in interest had already filed a
civil action challenging the validity of a claim of the patent. The
proposed rule would follow the statutory language of 35 U.S.C.
325(a)(1), which provides that post-grant reviews are barred by prior
civil action.
Proposed § 42.201(b) would provide that a petition may not be
filed where the petitioner, the petitioner's real party in interest, or
a privy of the petitioner is estopped from challenging the claims on
the grounds identified in the petition. The proposed rule is consistent
with 35 U.S.C. 325(e)(1) and 315(e)(1), as amended, which provide for
estoppel based upon a final written decision in a post-grant review, a
covered business method review, or inter partes review.
Section 42.202: Proposed § 42.202 would set forth the
timeliness requirement for filing a post-grant review petition.
Proposed § 42.202(a) would provide that a petition for a post-
grant review of a patent must be filed no later than the date that is
nine months after the date of the grant of a patent or of the issuance
of a reissue patent. Proposed § 42.202(a) would also provide that a
petition may not request a post-grant review for a claim in a reissue
patent that is identical to or narrower than a claim in the original
patent from which the reissue patent was issued unless the petition is
filed not later than the date that is nine months after the date of the
grant of the original patent. The proposed rule would be consistent
with the requirements of 35 U.S.C. 321(c).
Proposed § 42.202(b) would provide that the Director may limit
the number of post-grant reviews that may be instituted during each of
the first four 1-year periods after post-grant review takes effect.
This proposed rule is consistent with § 6(f)(2)(B) of the Leahy-
Smith America Invents Act (Pub. L. 112-29, 125 Stat. 284, 311 (2011)),
which provides for graduated implementation of post-grant reviews. The
Office, however, does not expect to limit the number of petitions at
this time.
Section 42.203: Proposed § 42.203 would provide that a fee must
accompany a petition for post-grant review and that no filing date will
be accorded until full payment is received. This proposed rule is
consistent with 35 U.S.C. 322(a)(1), which provides that a petition may
only be considered if the petition is accompanied by the payment of the
fee established by the Director.
Section 42.204: Proposed § 42.204 would provide for the content
of petitions to institute a post-grant review. The proposed rule is
consistent with 35 U.S.C. 322(a)(4), which allows the Director to
prescribe regulations concerning the information provided with the
petition.
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Proposed § 42.204(a) would provide that a petition must
demonstrate that the petitioner has standing. To establish standing, a
petitioner, at a minimum, must certify that the patent is available for
post-grant review and that the petitioner is not barred or estopped
from requesting a post-grant review. This proposed requirement attempts
to ensure that a party has standing to file the post-grant review and
would help prevent spuriously-instituted post-grant reviews. Facially,
improper standing is a basis for denying the petition without
proceeding to the merits of the petition.
Proposed § 42.204(b) would require that the petition identify
the precise relief requested for the claims challenged. Specifically,
the proposed rule would require that the petition identify each claim
being challenged, the specific grounds on which each claim is
challenged, how the claims are to be construed, how the claims as
construed are unpatentable, why the claims as construed are
unpatentable under the identified grounds, and the exhibit numbers of
the evidence relied upon with a citation to the portion of the evidence
that is relied upon to support the challenge. This proposed rule is
consistent with 35 U.S.C. 322(a)(3), which requires that the petition
identify, in writing and with particularity, each claim challenged, the
grounds on which the challenge to each claim is based, and the evidence
supporting the challenge. It is also consistent with 35 U.S.C.
322(a)(4), which allows the Director to require additional information
as part of the petition. The proposed rule would provide an efficient
means for identifying the legal and factual basis satisfying the
threshold for instituting a proceeding and would provide the patent
owner with a minimum level of notice as to the basis for the challenge
to the claims.
Proposed § 42.204(c) would provide that a petitioner seeking to
correct clerical or typographical mistakes in a petition could file a
procedural motion to correct the mistakes. The proposed rule would also
provide that the grant of such a motion would not alter the filing date
of the petition.
Section 42.205: Proposed § 42.205 would provide petition and
exhibit service requirements in addition to the service requirements of
§ 42.6.
Proposed § 42.205(a) would require the petitioner to serve the
patent owner at the correspondence address of record for the patent,
and permits service at any other address known to the petitioner as
likely to effect service as well. Once a patent has issued,
communications between the Office and the patent owner often suffer.
Ray v. Lehman, 55 F.3d 606 (Fed. Cir. 1995) (patentee's failure to
maintain correspondence address contributed to failure to pay
maintenance fee and therefore expiration of the patent). While the
proposed rule requires service at the correspondence address of record
in the patent, the petitioner will already be in communication with the
patent owner, in many cases, at a better service address than the
official correspondence address.
Proposed § 42.205(b) would address the situation where service
to a patent's correspondence address does not result in actual service
on the patent owner. When the petitioner becomes aware of a service
problem, it must promptly advise the Board of the problem. The
petitioner may be required to certify that it is not aware of any
better address for service of the patent owner. The Board may authorize
other forms of service, such as service by publication in the Official
Gazette of the United States Patent and Trademark Office.
Section 42.206: Proposed § 42.206 would provide for the filing
date requirements of a post-grant review petition.
Proposed § 42.206(a) would set forth the requirements for a
complete petition. 35 U.S.C. 322 states that a petition may only be
considered when the petition identifies all the real parties in
interest, when a copy of the petition is provided to the patent owner
or the owner's representative, and that the petition be accompanied by
the fee established by the Director. Consistent with the statute, the
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proposed rule would require that a complete petition be filed along
with the fee and that it be served upon the patent owner.
Proposed § 42.206(b) would provide one month to correct
defective requests to institute a post-grant review, unless the
statutory deadline in which to file a petition for post-grant review
has expired. The proposed rule is consistent with the requirement of 35
U.S.C. 322 that the Board may not consider a petition that fails to
meet the statutory requirements for a petition. In determining whether
to grant a filing date, the Board would review a petition for
procedural compliance. Where a procedural defect is noted, e.g.,
failure to state the claims being challenged, the Board would notify
the petitioner that the petition was incomplete and identify any non-
compliance issues.
Section 42.207: Proposed § 42.207(a) would provide that the
patent owner may file a preliminary response to the petition. The rule
is consistent with 35 U.S.C. 323, which provides for such a response.
Proposed § 42.207(b) would provide that the due date for the
preliminary response to petition is no later than two months from the
date of the notice that the request to institute a post-grant review
has been granted a filing date. This proposed rule is consistent with
35 U.S.C. 323, which provides that the Director shall set a time period
for filing the preliminary patent owner response.
Within three months from the filing of the preliminary patent owner
response, or three months from the date such a response was due, the
Board would determine whether to institute the review. A patent owner
seeking a shortened period for the determination may wish to file a
preliminary response well before the date the response is due,
including filing a paper stating that no preliminary response will be
filed. No adverse inference will be drawn where a patent owner elects
not to file a response or elects to waive the response.
Proposed § 42.207(c) would provide that the preliminary patent
owner response would not be allowed to present new testimony evidence,
for example, expert witness testimony on patentability. 35 U.S.C. 323
provides that a preliminary patent owner response set forth reasons why
no post-grant review should be instituted. In contrast, 35 U.S.C.
326(a)(8) provides for a patent owner response after institution and
requires the presentation, through affidavits or declarations, of any
additional factual evidence and expert opinions on which the patent
owner relies in support of the response. The difference in statutory
language demonstrates that 35 U.S.C. 323 does not permit for the
presentation of evidence as a matter of right in the form of testimony
in support of a preliminary patent owner response, and the proposed
rule reflects this distinction. In certain instances, however, a patent
owner may be granted additional discovery before filing their
preliminary response and submit any testimonial evidence obtained
through the discovery. For example, additional discovery may be
authorized where patent owner raises sufficient concerns regarding the
petitioner's certification of standing.
Although 35 U.S.C. 324 does not require that a preliminary patent
owner response be considered, the Board expects to consider such a
response in all but exceptional cases.
Proposed § 42.207(d) would provide that the preliminary patent
owner response would not be allowed to include any amendment. See
proposed § 42.221 for filing a motion to amend the patent after a
post-grant review has been instituted.
Proposed § 42.207(e) would provide that the patent owner may
file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with
§ 1.321(a), disclaiming one or more claims in the patent, and no
post-grant review will be instituted based on disclaimed claims.
Section 42.208: Proposed § 42.208 would provide for the
institution of a post-grant review.
35 U.S.C. 324(a), as amended, states that the Director may not
authorize a post-grant review to be instituted, unless the Director
determines that the information in the petition, if such information is
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not rebutted, demonstrate that it is more likely than not at least one
of the claims challenged in the petition is unpatentable.
Alternatively, the Director may institute a post-grant review by a
showing that the petition raises a novel or unsettled legal question
that is important to other patents or patent applications. Proposed
§ 42.208 is consistent with this statutory requirement and
identifies how the Board may authorize such a review to proceed.
Proposed § 42.208(a) would provide that the Board may authorize
the review to proceed on all or some of the challenged claims and on
all or some of the grounds of unpatentability asserted for each claim.
Specifically, in instituting the review, the Board would authorize the
review to proceed on the challenged claims for which the threshold
requirements for the proceeding have been met. The Board would identify
which of the grounds the review will proceed upon on a claim-by-claim
basis. Any claim or issue not included in the authorization for review
would not be part of the post-grant review. The Office intends to
publish a notice of the institution of a post-grant review in the
Official Gazette.
Proposed § 42.208(b) would provide that the Board, prior to
institution of a review, may deny some or all grounds for
unpatentability on some or all of the challenged claims. This proposed
rule is consistent with the efficient administration of the Office, which
is a consideration in prescribing post-grant review regulations under
35 U.S.C. 326(b).
Proposed § 42.208(c) would provide that the institution may be
based on a more likely than not standard and is consistent with the
requirements of 35 U.S.C. 324(a).
Proposed § 42.208(d) would provide that a determination under
§ 42.208(c) may be satisfied by a showing that the petition raises
a novel or unsettled legal question that is important to other patents
or patent applications. This proposed rule is consistent with 35 U.S.C.
324(b). The expectation is that this ground for a post-grant review
would be used sparingly.
Section 42.220: Proposed § 42.220 would set forth the procedure
in which the patent owner may file a patent owner response.
Proposed § 42.220(a) would provide for a patent owner response
and is consistent with the requirements of 35 U.S.C. 326(a)(8).
Proposed § 42.220(b) would provide that if no time for filing a
patent owner response to a petition is provided in a Board order, the
default time for filing the response would be two months from the date
the post-grant review is instituted. The Board's experience with patent
owner responses is that two months provides a sufficient amount of time
to respond in a typical case, especially as the patent owner would
already have been provided two months to file a preliminary patent
owner response prior to institution. Additionally, the proposed time
for response is consistent with the requirement that the trial be
conducted such that the Board renders a final decision within one year
of the institution of the review. 35 U.S.C. 326(a)(11).
Section 42.221: Proposed § 42.221 would provide a procedure for
a patent owner to file motions to amend the patent.
Proposed § 42.221(a) would make it clear that the first motion
to amend need not be authorized by the Board. If the motion complies
with the timing and procedural requirements, the motion would be
entered. Additional motions to amend would require prior Board
authorization. All motions to amend, even if entered, will not
automatically result in entry of the proposed amendment into the
patent.
The requirement to consult the Board reflects the Board's need to
regulate the substitution of claims and the amendment of the patent to
control unnecessary proliferation of issues and abuses. The proposed
rule aids in the efficient administration of the Office and the timely
completion of the review. 35 U.S.C. 326(b).
Proposed § 42.221(b) would provide that a motion to amend the
claims must set forth: (1) The support in the original disclosure of
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the patent for each claim that is added or amended, and (2) the support
in an earlier filed disclosure for each claim for which benefit of the
filing date of the earlier filed disclosure is sought.
Proposed § 42.221(c) would provide that a motion to amend the
claims will not be authorized where the amendment does not respond to
the ground of unpatentability involved in the trial or seeks to enlarge
the scope of the claims or introduce new matter.
The proposed rule aids the efficient administration of the Office
and the timely completion of the review, 35 U.S.C. 326(b), and is also
consistent with 35 U.S.C. 326(d)(3), which prohibits enlarging the
scope of claims or introducing new matter.
Under the proposed rules, a patent owner may request filing more
than one motion to amend its claims during the course of the
proceeding. Additional motions to amend may be permitted upon a
demonstration of good cause by the patent owner. In considering whether
good cause is shown, the Board will take into account how the filing of
such motions would impact the timely completion of the proceeding and
the additional burden placed on the petitioner. Specifically, belated
motions to amend may cause the integrity and efficiency of the review
to suffer as the petitioner may be required to devote significant time
and resources on claims that are of constantly changing scope.
Furthermore, due to time constraints, motions to amend late in the
process may not provide a petitioner a full and fair opportunity to
respond to the newly presented subject matter. Accordingly, the longer
a patent owner waits to request authorization to file an additional
motion to amend, the higher the likelihood the request will be denied.
Similarly, motion to amend may be permitted upon a joint request of the
petitioner and the patent owner to advance settlement where the motion
does not jeopardize the ability of the Office to timely complete the
proceeding.
Section 42.222: Proposed § 42.222 would prescribe a rule
consistent with the requirements of 35 U.S.C. 325(d) regarding multiple
proceedings involving the subject patent. When there is a question of a
stay concerning a matter for which a statutory time period is running
in one of the proceedings, where the stay would impact the ability of
the Office to meet the statutory deadline, it is expected that the
Director would be consulted prior to issuance of a stay, given that the
stay would impact the ability of the Office to meet the statutory
deadline for completing the post-grant review. For example, it is
expected that the Board would consult the Director prior to the
issuance of a stay in an ex parte reexamination proceeding where the
three month statutory time period under 35 U.S.C. 303 is running.
Section 42.223: Proposed § 42.223 would provide for the filing
of supplemental information. 35 U.S.C. 326(a)(3) provides that the
Director shall establish regulations establishing procedures for filing
supplemental information after the petition is filed. 35 U.S.C. 324(a)
provides that the institution of a post-grant review is based upon the
information filed in the petition under 35 U.S.C. 321 and any response
filed under 35 U.S.C. 323. As the institution of the post-grant review
is not based upon supplemental information, the proposed rule would
provide that motions identifying supplemental information be filed
after the institution of the post-grant review.
Section 42.224: Proposed § 42.224 would provide that additional
discovery in a post-grant review is limited to evidence directly
related to factual assertions advanced by a party to the proceeding and
that the standard for additional discovery is good cause. The proposed
rule is consistent with 35 U.S.C. 326(a)(5), which provides that the
Director shall prescribe regulations setting forth the standards and
procedures for discovery of relevant evidence that is directly related
to factual assertions by either party.
While an interests-of-justice standard will be employed in granting
additional discovery in inter partes reviews and derivation
proceedings, new subpart C will provide that a good cause standard is
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employed in post-grant reviews, and by consequence, in covered business
method patent reviews. Good cause and interests of justice are closely
related standards, but on balance, the interests-of-justice standard is
slightly higher than good cause. While a good cause standard requires a
party to show a specific factual reason to justify the needed
discovery, interests of justice would mean that the Board would look at
all relevant factors. The interests-of-justice standard covers
considerable more ground than the good cause standard, and in using
such a standard the Board will attempt to consider whether the additional
discovery is necessary in light of "the totality of the relevant
circumstances." U.S. v. Roberts, 978 F.2d 17, 22 (1st Cir. 1992).
Rulemaking Considerations
A. Administrative Procedure Act (APA): This notice proposes rules
of practice concerning the procedure for requesting a post-grant or
covered business method patent review, and the trial process after
initiation of such a review. The changes being proposed in this notice
do not change the substantive criteria of patentability. These proposed
changes involve rules of agency practice and procedure and/or
interpretive rules. See Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690
(DC Cir. 2001) (rules governing an application process are procedural
under the Administrative Procedure Act); Inova Alexandria Hosp. v.
Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals
were procedural where they did not change the substantive standard for
reviewing claims); Nat'l Org. of Veterans' Advocates v. Sec'y of
Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that
clarifies interpretation of a statute is interpretive).
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law), and
thirty-day advance publication is not required pursuant to 5 U.S.C.
553(d) (or any other law). See Cooper Techs. Co. v. Dudas, 536 F.3d
1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35
U.S.C. 2(b)(2)(B), does not require notice and comment rulemaking for
"interpretative rules, general statements of policy, or rules of
agency organization, procedure, or practice") (quoting 5 U.S.C.
553(b)(A)). The Office, however, is publishing these changes and the
Initial Regulatory Flexibility Act analysis, below, for comment as it
seeks the benefit of the public's views on the Office's proposed
implementation of these provisions of the Leahy-Smith America Invents
Act.
B. Regulatory Flexibility Act: The Office estimates that 50
petitions for post-grant and covered business method patent review will
be filed in fiscal year 2013. This will be the first fiscal year in
which the review proceeding will be available for an entire fiscal
year.
In fiscal year 2013, it is expected that no post-grant review
petitions will be received, other than those filed under the
transitional program for covered business method patents. Thus, the
estimated number of post-grant and covered business method patent
review petitions is based on the number of inter partes reexamination
requests filed in fiscal year 2011 for patents having an original
classification in class 705 of the United States Patent Classification
System. Class 705 is the classification for patents directed to data
processing in the following areas: financial, business practice,
management, or cost/price determination. See
http://www.uspto.gov/web/patents/classification/uspc705/sched705.pdf.
The following is the class definition and description for Class
705:
This is the generic class for apparatus and corresponding
methods for performing data processing operations, in which there is
a significant change in the data or for performing calculation
operations wherein the apparatus or method is uniquely designed for
or utilized in the practice, administration, or management of an
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enterprise, or in the processing of financial data.
This class also provides for apparatus and corresponding methods
for performing data processing or calculating operations in which a
charge for goods or services is determined.
This class additionally provides for subject matter described in
the two paragraphs above in combination with cryptographic apparatus
or method.
Subclasses 705/300-348 were established prior to complete
reclassification of all project documents. Documents that have not
yet been reclassified have been placed in 705/1.1. Until
reclassification is finished a complete search of 705/300-348 should
include a search of 705/1.1. Once the project documents in 705/1.1
have been reclassified they will be moved to the appropriate subclasses
and this note will be removed.
SCOPE OF THE CLASS
1. The arrangements in this class are generally used for
problems relating to administration of an organization, commodities
or financial transactions.
2. Mere designation of an arrangement as a "business machine"
or a document as a "business form" or "business chart" without
any particular business function will not cause classification in
this class or its subclasses.
3. For classification herein, there must be significant claim
recitation of the data processing system or calculating computer and
only nominal claim recitation of any external art environment.
Significantly claimed apparatus external to this class, claimed in
combination with apparatus under the class definition, which perform
data processing or calculation operations are classified in the
class appropriate to the external device unless specifically
excluded therefrom.
4. Nominally claimed apparatus external to this class in
combination with apparatus under the class definition is classified
in this class unless provided for in the appropriate external class.
5. In view of the nature of the subject matter included herein,
consideration of the classification schedule for the diverse art or
environment is necessary for proper search.
See Classification Definitions (Feb. 2011) available at
http://www.uspto.gov/web/patents/classification/uspc705/defs705.htm.
Accordingly, patents subject to covered business method patent
review are anticipated to be typically classifiable in Class 705. It is
anticipated that the number of patents in Class 705 that do not qualify
as covered business method patents would approximate the number of
patents classified in other classes that do qualify.
The Office received 20 requests for inter partes reexamination of
patents classified in Class 705 in fiscal year 2011. The Office is
estimating the number of petitions for covered business method patent
review to be higher than 20 requests due to an expansion of the grounds
for which review may be requested including subject matter eligibility
grounds, the greater coordination with litigation, and the provision
that patents will be eligible for the proceeding regardless of filing
date of the application which resulted in the patent. It is not
anticipated that any post-grant review petitions will be received in
fiscal year 2013 as only patents issuing based on certain applications
filed on or after March 16, 2013 are eligible for post-grant review, or
certain applications involved in an interference proceeding commenced
before September 12, 2012. Public Law 112-29, § 6(f), 125 Stat.
284, 311 (2011).
The Office has reviewed the entity status of patents for which
inter partes reexamination was requested from October 1, 2000, to
September 23, 2011. This data only includes filings granted a filing
date in the particular year rather than filings in which a request was
received in the year. The first inter partes reexamination was filed on
July 27, 2001. A summary of that review is provided in Table 1 below.
As shown by Table 1, patents known to be owned by a small entity
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represented 32.79% of patents for which inter partes reexamination was
requested. Based on an assumption that the same percentage of patents
owned by small entities will be subject to post-grant and covered
business method patent review, it is estimated that 16 petitions for
post-grant and covered business method patent review would be filed to
seek review of patents owned by a small entity in fiscal year 2013, the
first full fiscal year that these proceedings will be available.
Table 1 - Inter partes Reexamination Requests Filed
With Parent Entity Type *
Number filed
Inter partes where parent
reexamination patent is Percent small
requests small entity entity type
Fiscal year filed type of total
2011 329 123 37.39
2010 255 94 36.86
2009 240 62 25.83
2008 155 52 33.55
2007 127 35 27.56
2006 61 17 27.87
2005 59 18 30.51
2004 26 5 19.23
2003 21 12 57.14
2002 4 1 25.00
2001 1 0 0.00
1,278 419 32.79
* Small entity status determined by reviewing preexamination small entity
indicator for the parent patent.
Based on the number of patents issued during fiscal years 1995
through 1999 that paid the small entity third stage maintenance fee,
the number of patents issued during fiscal years 2000 through 2003 that
paid the small entity second stage maintenance fee, the number of
patents issued during fiscal years 2004 through 2007 that paid the
first stage maintenance fee, and the number of patents issued during
fiscal years 2008 through 2011 that paid a small entity issue fee,
there are no less than 375,000 patents owned by small entities in force
as of October 1, 2011.
Furthermore, the Office recognizes that there would be an offset to
this number for patents that expire earlier than 20 years from their
filing date due to a benefit claim to an earlier application or due to
a filing of a terminal disclaimer. The Office likewise recognizes that
there would be an offset in the estimate in the opposite manner due to
the accrual of patent term extension and adjustment. The Office,
however, does not maintain data on the date of expiration by operation
of a terminal disclaimer. Therefore, the Office has not adjusted the
estimate of 375,000 patents owned by small entities in force as of
October 1, 2011. While the Office maintains information regarding
patent term extension and adjustment accrued by each patent, the Office
does not collect data on the expiration date of patents that are
subject to a terminal disclaimer. As such, the Office has not adjusted
the estimated of 375,000 patents owned by small entities in force as of
October 1, 2011, for accrual of patent term extension and adjustment,
because in view of the incomplete terminal disclaimer data issue, would
be incomplete and any estimate adjustment would be administratively
burdensome. Thus, it is estimated that the number of small entity
patents in force in fiscal year 2013 will be at least 375,000.
Based on the estimated number of patents in force, the number of
small entity owned patents impacted by post-grant and covered business
method patent review in fiscal year 2013 (16 patents) would be less
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than 0.005% (16/375,000) of all patents in force that are owned by
small entities. The USPTO nonetheless has undertaken an Initial
Regulatory Flexibility Act Analysis of the proposed rule.
1. Description of the Reasons That Action by the Office Is Being
Considered: On September 16, 2011, the Leahy-Smith America Invents Act
was enacted into law (Pub. L. 112-29, 125 Stat. 284 (2011)). Section 6
of the Leahy-Smith America Invents Act amends title 35, United States
Code, by adding chapter 32 to create a new post-grant review
proceeding. Section 18 of the Leahy-Smith America Invents Act provides
for a transitional program for covered business method patents which
will employ the standards and procedures of the post-grant review
proceeding with a few exceptions. For the implementation, § 6(f) of
the Leahy-Smith America Invents Act requires that the Director issue
regulations to carry out chapter 32 of title 35, United States Code,
within one year after the date of enactment. Public Law 112-29, §
6(f), 125 Stat. 284, 311 (2011).
2. Succinct Statement of the Objectives of, and Legal Basis for,
the Proposed Rules: The proposed rules seek to implement post-grant and
covered business method patent review as authorized by the Leahy-Smith
America Invents Act. The Leahy-Smith America Invents Act requires that
the Director prescribe rules for the post-grant and covered business
method patent reviews that result in a final determination not later
than one year after the date on which the Director notices the
institution of a proceeding. The one-year period may be extended for
not more than 6 months if good cause is shown. See 35 U.S.C.
326(a)(11). The Leahy-Smith America Invents Act also requires that the
Director, in prescribing rules for post-grant and covered business
method patent reviews, consider the effect of the rules on the economy,
the integrity of the patent system, the efficient administration of the
Office, and the ability of the Office to complete timely the instituted
proceedings. See 35 U.S.C. 326(b). Consistent with the time periods
provided in 35 U.S.C. 326(a)(11), the proposed rules are designed to,
except where good cause is shown to exist, result in a final
determination by the Patent Trial and Appeal Board within one year of
the notice of initiation of the review. This one-year review will
enhance the effect on the economy, and improve the integrity of the
patent system and the efficient administration of the Office.
3. Description and Estimate of the Number of Affected Small
Entities: The Small Business Administration (SBA) small business size
standards applicable to most analyses conducted to comply with the
Regulatory Flexibility Act are set forth in 13 CFR 121.201. These
regulations generally define small businesses as those with fewer than
a specified maximum number of employees or less than a specified level
of annual receipts for the entity's industrial sector or North American
Industry Classification System (NAICS) code. As provided by the
Regulatory Flexibility Act, and after consultation
with the Small Business Administration, the Office formally adopted an
alternate size standard as the size standard for the purpose of
conducting an analysis or making a certification under the Regulatory
Flexibility Act for patent-related regulations. See Business Size
Standard for Purposes of United States Patent and Trademark Office
Regulatory Flexibility Analysis for Patent-Related Regulations, 71 FR
67109 (Nov. 20, 2006), 1313 Off. Gaz. Pat. Office 60 (Dec. 12, 2006).
This alternate small business size standard is SBA's previously
established size standard that identifies the criteria entities must
meet to be entitled to pay reduced patent fees. See 13 CFR 121.802. If
patent applicants identify themselves on a patent application as
qualifying for reduced patent fees, the Office captures this data in
the Patent Application Location and Monitoring (PALM) database system,
which tracks information on each patent application submitted to the
Office.
Unlike the SBA small business size standards set forth in 13 CFR
121.201, the size standard for USPTO is not industry-specific. The
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Office's definition of a small business concern for Regulatory
Flexibility Act purposes is a business or other concern that: (1) Meets
the SBA's definition of a "business concern or concern" set forth in
13 CFR 121.105; and (2) meets the size standards set forth in 13 CFR
121.802 for the purpose of paying reduced patent fees, namely an
entity: (a) Whose number of employees, including affiliates, does not
exceed 500 persons; and (b) which has not assigned, granted, conveyed,
or licensed (and is under no obligation to do so) any rights in the
invention to any person who made it and could not be classified as an
independent inventor, or to any concern which would not qualify as a
non-profit organization or a small business concern under this
definition. See Business Size Standard for Purposes of United States
Patent and Trademark Office Regulatory Flexibility Analysis for Patent-
Related Regulations, 71 FR at 67112 (Nov 20, 2006), 1313 Off. Gaz. Pat.
Office at 63 (Dec. 12, 2006).
As discussed above, it is anticipated that 50 petitions for post-
grant and covered business method patent review will be filed in fiscal
year 2013. The Office has reviewed the percentage of patents for which
inter partes reexamination was requested from October 1, 2000 to
September 23, 2011. A summary of that review is provided in Table 1
above. As demonstrated by Table 1, patents known to be owned by a small
entity represent 32.79% of patents for which inter partes reexamination
was requested. Based on an assumption that the same percentage of
patents owned by small entities will be subject to the new review
proceedings, it is estimated that 16 patents owned by small entities
would be affected by a post-grant or covered business method patent
review.
The USPTO estimates that 2.5% of patent owners will file a request
for adverse judgment prior to a decision to institute and that another
2.5% will file a request for adverse judgment or fail to participate
after initiation. Specifically, an estimated 2 patent owners will file
a request for adverse judgment or fail to participate after institution
in post-grant and covered business method patent review proceedings
combined. Based on the percentage of small entity owned patents that
were the subject of inter partes reexamination (32.79%) from October 1,
2000 to September 23, 2011, it is estimated that 1 small entity will
file such requests or fail to participate in post-grant and covered
business method patent review combined.
Under the proposed rules, prior to determining whether to institute
a review, the patent owner may file an optional patent owner
preliminary response to the petition. Given the new time period
requirements to file a petition for review before the Board relative to
patent enforcement proceedings and the desire to avoid the cost of a
trial and delays to related infringement actions, it is anticipated
that 90% of petitions, other than those for which a request for adverse
judgment is filed, will result in the filing of a patent owner
preliminary response. Specifically, the Office estimates that 45 patent
owners will file a preliminary response to a post-grant or covered
business method petition. Based on the percentage of small entity owned
patents that were the subject of inter partes reexamination (32.79%),
it is estimated that 15 small entities will file a preliminary response
to a post-grant or covered business method patent review petition filed
in fiscal year 2013.
Under the proposed rules, the Office will determine whether to
institute a trial within three months after the earlier of: (1) The
submission of a patent owner preliminary response, (2) the waiver of
filing a patent owner preliminary response, or (3) the expiration of
the time period for filing a patent owner preliminary response. If the
Office decides not to institute a trial, the petitioner may file a
request for reconsideration of the Office's decision. In estimating the
number of requests for reconsideration, the Office considered the
percentage of inter partes reexaminations that were denied relative to
those that were ordered (24 divided by 342, or 7%) in fiscal year 2011.
See Reexamination - FY 2011, http://www.uspto.gov/patents/Reexamination_
operational_statistic_through_FY2011Q4.pdf. The Office also considered the
impact of: (1) Patent owner preliminary responses under newly authorized
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in 35 U.S.C. 323, (2) the enhanced thresholds for instituting reviews
set forth in 35 U.S.C. 324(a), which would tend to increase the likelihood
of dismissing a petition for review, and (3) the more restrictive time
period for filing a petition for review in 35 U.S.C. 325(b), which would
tend to reduce the likelihood of dismissing a petition. Based on these
considerations, it is estimated that 10% of the petitions for review (5
divided by 49) would be dismissed.
During fiscal year 2011, the Office issued 21 decisions following a
request for reconsideration of a decision on appeal in inter partes
reexamination. The average time from original decision to decision on
reconsideration was 4.4 months. Thus, the decisions on reconsideration
were based on original decisions issued from July 2010 until June 2011.
During this time period, the Office mailed 63 decisions on appeals in
inter partes reexamination. See BPAI Statistics - Receipts and
Dispositions by Technology Center, http://www.uspto.gov/ip/boards/
bpai/stats/receipts/index.jsp (monthly data). Based on the assumption
that the same rate of reconsideration (21 divided by 63 or 33.333%) will
occur, the Office estimates that 2 requests for reconsideration will be
filed. Based on the percentage of small entity owned patents that were
the subject of inter partes reexamination (32.79%), it is estimated
that 1 small entity will file a request for a reconsideration of a
decision dismissing the petition for post-grant and covered business
method patent review filed in fiscal year 2013.
The Office reviewed motions, oppositions, and replies in a number
of contested trial proceedings before the trial section of the Board.
The review included determining whether the motion, opposition, and
reply were directed to patentability grounds and non-priority non-
patentability grounds. Based on the review, it is anticipated that
post-grant and covered business method patent reviews will have an
average of 8.89 motions, oppositions, and replies per trial after
institution. Settlement is estimated to occur in 20% of instituted
trials at various points of the trial. In the trials that are settled,
it is estimated that only 50% of the noted motions, oppositions, and
replies would be filed.
After a trial has been instituted but prior to a final written
decision, parties to a post-grant or covered business method patent
review may request an oral hearing. It is anticipated that 45 requests
for oral hearings will be filed based on the number of requests for
oral hearings in inter partes reexamination, the stated desirability
for oral hearings during the legislative process, and the public input
received prior to this notice of proposed rulemaking. Based on the
percentage of small entity owned patents that were the subject of inter
partes reexamination (32.79%), it is estimated that 15 small entities
will file a request for oral hearing in the post-grant or covered
business method patent reviews instituted in fiscal year 2013.
Parties to a post-grant or covered business method patent review
may file requests to treat a settlement as business confidential, and
request for adverse judgment. A written request to make a settlement
agreement available may also be filed. Given the short time period set
for conducting trials, it is anticipated that the alternative dispute
resolution options will be infrequently used. The Office estimates that
2 requests to treat a settlement as business confidential, and 10
requests for adverse judgment, default adverse judgment, or settlement
notices will be filed. The Office also estimates that 2 requests to
make a settlement available will be filed. Based on the percentage of
small entity owned patents that were the subject of inter partes
reexamination (32.79%), it is estimated that 1 small entity will file a
request to treat a settlement as business confidential and 3 small
entities will file a request for adverse judgment, default adverse
judgment notices, or settlement notices in the reviews instituted in
fiscal year 2013.
Parties to a post-grant or covered business method patent review
may seek judicial review of the final decision of the Board.
Historically, 33% of examiner's decisions in inter partes reexamination
proceedings have been appealed to the Board. It is anticipated that 16%
of final decision of the Board would be appealed. The reduction in
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appeal rate is based the higher threshold for institution, the focused
process, and the experience of the Board in conducted contested cases.
Therefore, it is estimated that 5 parties would seek judicial review of
the final decisions of the Board in post-grant or covered business
method patent reviews instituted in fiscal year 2013. Furthermore,
based on the percentage of small entity owned patents that were the
subject of inter partes reexamination (32.79%), it is estimated that 2
small entities would seek judicial review of final decisions of the
Board in the post-grant or covered business method patent reviews
instituted in fiscal year 2013.
4. Description of the Reporting, Recordkeeping, and Other
Compliance Requirements of the Proposed Rule, Including an Estimate of
the Classes of Small Entities Which Will Be Subject to the Requirement
and the Type of Professional Skills Necessary for Preparation of the
Report or Record: Based on the filing trends of inter partes
reexamination requests, it is anticipated that petitions for post-grant
review will be filed across all technologies with approximately 50%
being filed in electrical technologies, approximately 30% in mechanical
technologies, and the remaining 20% in chemical technologies and
design. Under the proposed rules, a person who is not the owner of a
patent may file a petition to institute a review of the patent, with a
few exceptions. Given this, a petition for review is likely to be filed
by an entity practicing in the same or similar field as the patent.
Therefore, it is anticipated that 50% of the petitions for review will
be filed in the electronic field, 30% in the mechanical field, and 20%
in the chemical or design fields for post-grant review.
Covered business method patent reviews would be limited to business
method patents that are not patents for technological inventions. Under
the proposed rules, a person who is not the owner of a patent may file
a petition to institute a review of the patent, with a few exceptions.
Given this, it is anticipated that a petition for review is likely to
be filed by an entity practicing in the business method field for
covered business methods.
Preparation of the petition would require analyzing the patent
claims, locating evidence supporting arguments of unpatentability, and
preparing the petition seeking review of the patent. This notice
provides the proposed procedural requirements that are common for the
new trials. Additional requirements are provided in contemporaneous
trial specific proposed rulemaking. The procedures for petitions to
institute a post-grant review are proposed in §§ 42.5, 42.6,
42.8, 42.11, 42.13, 42.20, 42.21, 42.22, 42.24(a)(2)), 42.63, 42.65,
and 42.201 through 42.205. The procedures for petitions to institute a
covered business method patent review are proposed in §§ 42.5,
42.6, 42.8, 42.11, 42.13, 42.20, 42.21, 42.22, 42.24(a)(3), 42.63,
42.65, 42.203, 42.205, and 42.302 through 42.304.
The skills necessary to prepare a petition for review and to
participate in a trial before the Patent Trial and Appeal Board would
be similar to those needed to prepare a request for inter partes
reexamination, to represent a party in an inter partes reexamination,
and to represent a party in an interference proceeding before the
Patent Trial and Appeal Board. The level of skill is typically
possessed by a registered patent practitioner having devoted
professional time to the particular practice area, typically under the
supervision of a practitioner skilled in the particular practice area.
Where authorized by the Board, a non-registered practitioner may be
admitted pro hac vice, on a case-by-case basis based on the facts and
circumstances of the trial and party, as well as the skill of the
practitioner.
The cost of preparing a petition for post-grant or covered business
method patent review is estimated to be 33.333% higher than the cost of
preparing an inter partes review petition because the petition for
post-grant or covered business method patent review may seek to
institute a proceeding on additional grounds such as subject matter
eligibility. The American Intellectual Property Law Association's AIPLA
Report of the Economic Survey 2011 reported that the average cost of
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preparing a request for inter partes reexamination was $46,000. Based
on the work required to prepare and file such a request, the Office
considers the reported cost as a reasonable estimate. Therefore, the
Office estimates that the cost of preparing a petition for post-grant
or covered business method patent review would be $61,333 (including
expert costs).
The filing of a petition for review would also require payment by
the petitioner of the appropriate petition fee to recover the aggregate
cost for providing the review. The appropriate petition fee would be
determined by the number of claims for which review is sought and the
type of review. The proposed fees for filing a petition for post-grant
or covered business method patent review would be: $35,800 to request
review of 20 or fewer claims, $44,750 to request review of 21 to 30
claims, $53,700 to request review of 31 to 40 claims, $71,600 to
request review of 41 to 50 claims, $89,500 to request review of 51 to
60 claims, and an additional $35,800 to request review of additional
groups of 10 claims.
In setting fees, the estimated information technology cost to
establish the process and maintain the filing and storage system
through 2017 is to be recovered by charging each petition $2,270. The
remainder of the fee is to recover the cost for judges to determine
whether to institute a review and conduct the review, together with a
proportionate share of indirect costs, e.g., rent, utilities, additional
support, and administrative costs. Based on the direct and indirect costs,
the fully burdened cost per hour for judges to decide a petition and
conduct a review is estimated to be $258.32.
For a petition for post-grant or covered business method patent
review with 20 or fewer challenged claims, it is anticipated that 121
hours of judge time would be required. For 21 to 30 challenged claims,
an additional 30 hours is anticipated for a total of 151 hours of judge
time. For 31 to 40 challenged claims, an additional 60 hours is
anticipated for a total of 181 hours of judge time. For 41 to 50
challenged claims, an additional 121 hours is anticipated for a total
of 242 hours of judge time. For 51 to 60 challenged claims, an
additional 181 hours is anticipated for a total of 302 hours of judge
time. The increase in adjustment reflects the added complexity that
typically occurs as more claims are in dispute.
The proposed rules would permit the patent owner to file a
preliminary response to the petition setting forth the reasons why no
review should be initiated. The procedures for a patent owner to file a
preliminary response as an opposition are proposed in §§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.23, 42.24(b), 42.51, 42.52, 42.53, 42.54,
42.63, 42.64, 42.65, 42.107, 42.120, 42.207, and 42.220. The patent
owner is not required to file a preliminary response. The Office
estimates that the preparation and filing of a patent owner preliminary
response would require 100 hours of professional time and cost $34,000
(including expert costs). The AIPLA Report of the Economic Survey 2011
reported that the average cost for inter partes reexamination including
of the request ($46,000), the first patent owner response, and third-
party comments was $75,000 (see I-175) and the median billing rate for
professional time of $340 per hour for attorneys in private firms (see
8). Thus, the cost of the first patent owner reply and the third party
statement is $29,000. The Office finds these costs to be reasonable
estimates. The patent owner reply and third party statement, however,
occur after the examiner has made an initial threshold determination
and made only the appropriate rejections. Accordingly, it is
anticipated that filing a patent owner preliminary response to a
petition for review would cost more than the initial reply in a
reexamination, or an estimated $34,000 (including expert costs).
The Office will determine whether to institute a trial within three
months after the earlier of: (1) The submission of a patent owner
preliminary response, (2) the waiver of filing a patent owner
preliminary response, or (3) the expiration of the time period for
filing a patent owner preliminary response. If the Office decides not
to institute a trial, the petitioner may file a request for
reconsideration of the Office's decision. It is anticipated that a
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request for reconsideration will require 80 hours of professional time
to prepare and file, for a cost of $27,200. This estimate is based on
the complexity of the issues and desire to avoid time bars imposed by
35 U.S.C. 325(b).
Following institution of a trial, the parties may be authorized to
file various motions, e.g., motions to amend and motions for additional
discovery. Where a motion is authorized, an opposition may be
authorized, and where an opposition is authorized, a reply may be
authorized. The procedures for filing a motion are proposed in
§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.22, 42.24(a)(5), 42.51,
42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.221, and 42.223. The
procedures for filing an opposition are proposed in §§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.23, 42.24(b), 42.51, 42.52, 42.53, 42.54,
42.63, 42.64, 42.65, 42.207, and 42.220. The procedures for filing a
reply are proposed in §§ 42.6, 42.8, 42.11, 42.13, 42.21,
42.23, 42.24(c), 42.51, 42.52, 42.53, 42.54, 42.63, and 42.65. As
discussed previously, the Office estimates that the average post-grant
or covered business method patent review will have 8.89 motions,
oppositions, and replies after institution.
The AIPLA Report of the Economic Survey 2011 reported that the
average cost in contested cases before the trial section of the Board
prior to the priority phase was $322,000 per party. Because of the
overlap of issues in patentability grounds, it is expected that the
cost per motion will decline as more motions are filed in a proceeding.
It is estimated that a motion, opposition, or reply in a derivation
would cost $34,000, which is estimated by dividing the total public
cost for all motions in current contested cases divided by the
estimated number of motions in derivations under 35 U.S.C. 135, as
amended. The cost of a motion, opposition, or reply in a post-grant or
covered business method patent review is estimated at $44,200
(including expert costs), reflecting the reduction in overlap between
motions relative to derivation. Based on the work required to file and
prepare such briefs, the Office considers the reported cost as a
reasonable estimate.
After a trial has been instituted but prior to a final written
decision, parties to a post-grant or covered business method patent
review may request an oral hearing. The procedure for filing requests
for oral argument is proposed in § 42.70. The AIPLA Report of the
Economic Survey 2011 reported that the third quartile cost of an ex
parte appeal with an oral argument is $12,000, while the third quartile
cost of an ex parte appeal without an oral argument is $6,000. In view
of the reported costs, which the Office finds reasonable, and the
increased complexity of an oral hearing with multiple parties, it is
estimated that the cost per party for oral hearings would be $6,800 or
$800 more than the reported third quartile cost for an ex parte oral
hearing.
Parties to a post-grant or covered business method patent review
may file requests to treat a settlement as business confidential, or
file a request for adverse judgment. A written request to make a
settlement agreement available may also be filed. The procedures to
file requests that a settlement be treated as business confidential are
proposed in § 42.74(c). The procedures to file requests for adverse
judgment are proposed in § 42.73(b). The procedures to file
requests to make a settlement agreement available are proposed in
§ 42.74(c)(2). It is anticipated that requests to treat a settlement as
business confidential will require 2 hours of professional time or
$680. It is anticipated that requests for adverse judgment will require
1 hour of professional time or $340. It is anticipated that requests to
make a settlement agreement available will require 1 hour of
professional time or $340. The requests to make a settlement agreement
available will also require payment of a fee of $400 specified in
proposed § 42.15(d).
Parties to a review proceeding may seek judicial review of the
judgment of the Board. The procedures to file notices of judicial
review of a Board decision, including notices of appeal and notices of
election provided for in 35 U.S.C. 141, 142, 145, and 146, are proposed
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in §§ 90.1 through 90.3. The submission of a copy of a notice
of appeal or a notice of election is anticipated to require 6 minutes
of professional time at a cost of $34.
5. Description of Any Significant Alternatives to the Proposed
Rules Which Accomplish the Stated Objectives of Applicable Statutes and
Which Minimize Any Significant Economic Impact of the Rules on Small
Entities:
Size of petitions and motions: The Office considered whether to
apply a page limit and what an appropriate page limit would be. The Office
does not currently have a page limit on inter partes reexamination requests.
The inter partes reexamination requests from October 1, 2010 to June 30,
2011, averaged 246 pages. Based on the experience of processing inter
partes reexamination requests, the Office finds that the very large size of
the requests has created a burden on the Office that hinders the efficiency
and timeliness of processing the requests, and creates a burden on patent
owners. The quarterly reported average processing time from the filing
of a request to the publication of a reexamination certificate ranged
from 28.9 months to 41.7 months in fiscal year 2009, from 29.5 months
to 37.6 months in fiscal year 2010, and from 31.9 to 38.0 months in
fiscal year 2011. See Reexaminations - FY 2011, http://www.uspto.gov/
patents/Reexamination_operational_statistic_through_FY2011Q4.pdf.
By contrast, the Office has a page limit on the motions filed in
contested cases, except where parties are specifically authorized to
exceed the limitation. The typical contested case proceeding is subject
to a standing order that sets a 50 page limit for motions and
oppositions on priority, a 15 page limit for miscellaneous motions
(§ 41.121(a)(3)) and oppositions (§ 41.122), and a 25 page
limit for other motions (§ 41.121(a)(2)) and oppositions to other
motions. In typical proceedings, replies are subject to a 15 page limit
if directed to priority, a 5 page limit for miscellaneous issues, and
10 pages for other motions. The average contested case was terminated
in 10.1 months in fiscal year 2009, in 12 months in fiscal year 2010,
and 9 months in fiscal year 2011. The percentage of contested cases
terminated within 2 years was 93.7% in fiscal year 2009, 88.0% in
fiscal year 2010, and 94.0% in fiscal year 2011. See BPAI Statistics -
Performance Measures,
http://www.uspto.gov/ip/boards/bpai/stats/perform/index.jsp.
Comparing the average time period for terminating a contested case,
10.0 to 12.0 months, with the average time period, during fiscal years
2009 through 2011, for completing an inter partes reexamination, 28.9
to 41.7 months, indicates that the average interference takes from 24%
(10.0/41.7) to 42% (12.0/28.9) of the time of the average inter partes
reexamination. While several factors contribute to the reduction in
time, limiting the size of the requests and motions is considered a
significant factor. Proposed § 42.24 would provide page limits for
petitions, motions, oppositions, and replies. 35 U.S.C. 326(b) provides
considerations that are to be taken into account when prescribing
regulations including the integrity of the patent system, the efficient
administration of the Office, and the ability to complete timely the
trials. The page limits proposed in these rules are consistent with
these considerations.
Federal courts routinely use page limits in managing motions
practice as "[e]ffective writing is concise writing." Spaziano v.
Singletary, 36 F.3d 1028, 1031 n.2 (11th Cir. 1994). Many district
courts restrict the number of pages that may be filed in a motion
including, for example, the District of Delaware, the District of New
Jersey, the Eastern District of Texas, the Northern, Central, and
Southern Districts of California, and the Eastern District of Virginia.
Federal courts have found that page limits ease the burden on both
the parties and the courts, and patent cases are no exception. Eolas
Techs., Inc. v. Adobe Sys., Inc., No. 6:09-CV-446, at 1 (E.D. Tex.
Sept. 2, 2010) ("The Local Rules' page limits ease the burden of
motion practice on both the Court and the parties."); Blackboard, Inc.
v. Desire2Learn, Inc., 521 F. Supp. 2d 575, 576 (E.D. Tex. 2007) (The
parties "seem to share the misconception, popular in some circles,
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that motion practice exists to require federal judges to shovel through
steaming mounds of pleonastic arguments in Herculean effort to uncover
a hidden gem of logic that will ineluctably compel a favorable ruling.
Nothing could be farther from the truth."); Broadwater v. Heidtman
Steel Prods., Inc., 182 F. Supp. 2d 705, 710 (S.D. Ill. 2002)
("Counsel are strongly advised, in the future, to not ask this Court
for leave to file any memoranda (supporting or opposing dispositive
motions) longer than 15 pages. The Court has handled complicated patent
cases and employment discrimination cases in which the parties were
able to limit their briefs supporting and opposing summary judgment to
10 or 15 pages." (Emphasis omitted)).
The Board's contested cases experience with page limits in motions
practice is consistent with that of the federal courts. The Board's use
of page limits has shown it to be beneficial without being unduly
restrictive for the parties. Page limits have encouraged the parties to
focus on dispositive issues, easing the burden of motions practice on
the parties and on the Board.
The Board's contested cases experience with page limits is informed
by its use of different approaches over the years. In the early 1990s,
page limits were not routinely used for motions, and the practice
suffered from lengthy and unacceptable delays. To reduce the burden on
the parties and on the Board and thereby reduce the time to decision,
the Board instituted page limits in the late 1990s for every motion.
Page limit practice was found to be effective in reducing the burdens
on the parties and improving decision times at the Board. In 2006, the
Board revised the page limit practice and allowed unlimited findings of
fact and generally limited the number of pages containing argument. Due
to abuses of the system, the Board recently reverted back to page
limits for the entire motion (both argument and findings of fact).
The Board's current page limits are consistent with the 25 page
limits in the Northern, Central, and Southern Districts of California,
and the Middle District of Florida and exceed the limits in the
District of Delaware (20), the Northern District of Illinois (15), the
District of Massachusetts (20), the Eastern District of Michigan (20),
the Southern District of Florida (20), and the Southern District of
Illinois (20).
In a typical proceeding before the Board, a party may be authorized
to file a single motion for unpatentability based on prior art, a
single motion for unpatentability based upon failure to comply with 35
U.S.C. 112, lack of written description, and/or enablement, and
potentially another motion for lack of compliance with 35 U.S.C. 101,
although a 35 U.S.C. 101 motion may be required to be combined with the
35 U.S.C. 112 motion. Each of these motions is currently limited to 25
pages in length, unless good cause is shown that the page limits are
unduly restrictive for a particular motion.
A petition requesting the institution of a trial proceeding would
be similar to motions currently filed with the Board. Specifically,
petitions to institute a trial seek a final written decision that the
challenged claims are unpatentable, where derivation is a form of
unpatentability. Accordingly, a petition to institute a trial based on
prior art would, under current practice, be limited to 25 pages, and by
consequence, a petition raising unpatentability based on prior art and
unpatentability under 35 U.S.C. 101 and/or 112 would be limited to 50
pages.
Under the proposed rules, a post-grant review petition would be
based upon any grounds identified in 35 U.S.C. 321(b), e.g., failure to
comply with 35 U.S.C. 101, 102, 103, and 112 (except best mode). Under
current practice, a party would be limited to filing two or three
motions, each limited to 25 pages, for a maximum of 75 pages. Where
there is more than one motion for unpatentability based upon different
statutory grounds, the Board'sexperience is that the motions contain
similar discussions of technology and claim constructions. Such overlap
is unnecessary where a single petition for unpatentability is filed. Thus,
the proposed 70 page limit is considered sufficient in all but exceptional
cases.
Covered business method patent review is similar in scope to that
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of post-grant review as there is substantial overlap in the statutory
grounds permitted for review. Thus, the proposed page limit for
proposed covered business method patent reviews is 70 pages, which is
the same as that proposed for post-grant review.
The proposed rule would provide that petitions to institute a trial
must comply with the stated page limits but may be accompanied by a
motion that seeks to waive the page limits. The petitioner must show in
the motion how a waiver of the page limits is in the interests of
justice. A copy of the desired non-page limited petition must accompany
the motion. Generally, the Board would decide the motion prior to
deciding whether to institute the trial.
Current Board practice provides a limit of 25 pages for other
motions and 15 pages for miscellaneous motions. The Board's experience
is that such page limits are sufficient for the parties filing them and
do not unduly burden the opposing party or the Board. Petitions to
institute a trial would generally replace the current practice of
filing motions for unpatentability, as most motions for relief are
expected to be similar to the current interference miscellaneous motion
practice. Accordingly, the proposed 15 page limit is considered
sufficient for most motions but may be adjusted where the limit is
determined to be unduly restrictive for the relief requested.
Proposed § 42.24(b) would provide page limits for oppositions
filed in response to motions. Current contested cases practice provides
an equal number of pages for an opposition as its corresponding motion.
This is generally consistent with motions practice in federal courts.
The proposed rule would continue the current practice.
Proposed § 42.24(c) would provide page limits for replies.
Current contested cases practice provides a 15 page limit for priority
motion replies, a 5 page limit for miscellaneous (procedural) motion
replies, and a 10 page limit for all other motions. The proposed rule
is consistent with current contested case practice for procedural
motions. The proposed rule would provide a 15 page limit for reply to
petitions requesting a trial, which the Office believes is sufficient
based on current practice. Current contested cases practice has shown
that such page limits do not unduly restrict the parties and, in fact,
have provided sufficient flexibility to parties to not only reply to
the motion but also help to focus on the issues. Thus, it is
anticipated that default page limits would minimize the economic impact
on small entities by focusing on the issues in the trials.
The Leahy-Smith America Invents Act requires that the Director, in
prescribing rules for post-grant and covered business method patent
reviews, consider the effect of the rules on the economy, the integrity
of the patent system, the efficient administration of the Office, and
the ability of the Office to complete timely the instituted
proceedings. See 35 U.S.C. 326(b). In view of the actual results of the
duration of proceedings in inter partes reexamination (without page
limits) and contested cases (with page limits), proposing procedures
with reasonable page limits would be consistent with the objectives set
forth in the Leahy-Smith America Invents Act. Based on our experience
on the time needed to complete a non-page limited proceeding, the
option of non-page limited proceedings was not adopted.
Fee Setting: 35 U.S.C. 321(a) requires the Director to establish
fees to be paid by the person requesting the review in such amounts as
the Director determines to be reasonable, considering the aggregate
costs of the review. In contrast to current 35 U.S.C. 311(b) and
312(c), the Leahy-Smith America Invents Act requires the Director to
establish more than one fee for reviews based on the total cost of
performing the reviews, and does not provide for refund of any part of
the fee when the Director determines that the review should not be
initiated.
35 U.S.C. 322(a)(1) further requires that the fee established by
the Director under 35 U.S.C. 321 accompany the petition on filing.
Accordingly, in interpreting the fee setting authority in 35 U.S.C.
321(a), it is reasonable that the Director should set a number of fees
for filing a petition based on the anticipated aggregate cost of
conducting the review depending on the complexity of the review, and
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require payment of the fee upon filing of the petition.
Based on experience with contested cases and inter partes
reexamination proceedings, the following characteristics of requests
were considered as potential factors for fee setting as each would
likely impact the cost of providing the new services. The Office also
considered the relative difficulty in administrating each option in
selecting the characteristics for which different fees should be paid
for requesting review.
I. Adopted Option. Number of claims for which review is requested.
The number of claims often impacts the complexity of the request and
increases the demands placed on the deciding officials. Cf. In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1309 (Fed.
Cir. 2011) (limiting number of asserted claims is appropriate to
efficiently manage a case). Moreover, the number of claims for which
review is requested can be easily determined and administered, which
avoids delays in the Office and the impact on the economy or patent
system that would occur if an otherwise meritorious request is refused
due to improper fee payment. Any subsequent petition would be time
barred in view 35 U.S.C. 325.
II. Alternative Option I. Number of grounds for which review is
requested. The Office has experience with large numbers of cumulative
grounds being presented in inter partes reexaminations, which often add
little value to the proceedings. Allowing for a large number of grounds
to be presented on payment of an additional fee(s) is not favored.
Determination of the number of grounds in a request may be contentious
and difficult and may result in a large amount of high-level petition
work. As such, the option would have a negative impact on small
entities. Moreover, interferences instituted in the 1980s and early
1990s suffered from this problem as there was no page limit for motions
and the parties had little incentive to focus the issues for decision.
The resulting interference records were often a collection of disparate
issues and evidence. This led to lengthy and unwarranted delays in
deciding interference cases as well as increased costs for parties and
the Office. Accordingly, this alternative is inconsistent with
objectives of the Leahy-Smith America Invents Act that the Director, in
prescribing rules for the post-grant and covered business method patent
reviews, consider the effect of the rules on the economy, the integrity
of the patent system, the efficient administration of the Office, and
the ability of the Office to timely complete the instituted
proceedings.
III. Alternative Option II. Pages of argument. The Office has
experience with large requests in inter partes reexamination in which
the merits of the proceedings could have been resolved in a shorter
request. Allowing for unnecessarily large requests on payment of an
additional fee(s) is not favored. Moreover, determination of
what should be counted as "argument" as compared with "evidence"
has often proven to be contentious and difficult as administered in the
current inter partes reexamination appeal process.
In addition, the trial section of the Board recently experimented
with motions having a fixed page limit for the argument section and an
unlimited number of pages for the statement of facts. Unlimited pages
for the statement of facts led to a dramatic increase in the number of
alleged facts and pages associated with those facts. For example, one
party used approximately 10 pages for a single "fact" that merely cut
and pasted a portion of a declarant's cross-examination. Based upon the
trial section's experience with unlimited pages of facts, the Board
recently reverted back to a fixed page limit for the entire motion
(argument and facts). Accordingly, this alternative is inconsistent
with objectives of the Leahy-Smith America Invents Act that the
Director, in prescribing rules for the post-grant and covered business
method patent reviews, consider the effect of the rules on the economy,
the integrity of the patent system, the efficient administration of the
Office, and the ability of the Office to complete timely the instituted
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proceedings.
IV. Alternative Option III. The Office considered an alternative
fee setting regime in which fees would be charged at various steps in
the review process, a first fee on filing of the petition, a second fee
if instituted, a third fee on filing a motion in opposition to amended
claims, etc. The alternative fee setting regime would hamper the
ability of the Office to complete timely reviews, would result in
dismissal of pending proceedings with patentability in doubt due to
non-payment of required fees by third parties, and would be
inconsistent with 35 U.S.C. 322 that requires the fee established by
the Director be paid at the time of filing the petition. Accordingly,
this alternative is inconsistent with objectives of the Leahy-Smith
America Invents Act that the Director, in prescribing rules for post-
grant and covered business method patent reviews, consider the effect
of the rules on the economy, the integrity of the patent system, the
efficient administration of the Office, and the ability of the Office
to complete timely the instituted proceedings.
V. Alternative Option IV. The Office considered setting reduced
fees for small and micro entities and to provide refunds if a review is
not instituted. The Office may set the fee to recover the cost of
providing the services under 35 U.S.C. 41(d)(2)(a). Fees set under this
authority are not reduced for small entities, see 35 U.S.C. 42(h)(1),
as amended. Moreover, the Office does not have authority to refund fees
that were not paid by mistake or in excess of that owed. See 35 U.S.C.
42(d).
Discovery: The Office considered a procedure for discovery similar
to the one available during district court litigation. Discovery of
that scope has been criticized sharply, particularly when attorneys use
discovery tools as tactical weapons, which hinder the "just, speedy,
and inexpensive determination of every action and proceedings." See
Introduction to An E-Discovery Model Order available at
http://www.cafc.uscourts.gov/images/stories/announcements/Ediscovery_
Model_Order.pdf. Accordingly, this alternative would have been
inconsistent with objectives of the Leahy-Smith America Invents Act that
the Director, in prescribing rules for the post-grant and covered business
method patent reviews, consider the effect of the rules on the economy,
the integrity of the patent system, the efficient administration of the
Office, and the ability of the Office to complete timely the instituted
proceedings.
Additional discovery increases trial costs and increases the
expenditures of time by the parties and the Board. To promote effective
discovery, the proposed rule would require a showing of good cause to
authorize additional requested discovery. To show good cause, a party
must make a particular and specific demonstration of fact. The moving
party must also show that it was fully diligent in seeking discovery,
and that there is no undue prejudice to the non-moving party.
The Office has proposed a default scheduling order to provide
limited discovery as a matter of right and also the ability to seek
additional discovery on a case-by-case basis. In weighing the need for
additional discovery, should a request be made, the economic impact on
the opposing party would be considered which would tend to limit
additional discovery where a party is a small entity.
Pro Hac Vice: The Office considered whether to allow counsel to
appear pro hac vice. In certain cases, highly skilled, but non-
registered, attorneys have appeared satisfactorily before the Board in
contested cases. The Board may recognize counsel pro hac vice during a
proceeding upon a showing of good cause. Proceedings before the Office
can be technically complex. Consequently, the grant of a motion to
appear pro hac vice is a discretionary action taking into account the
specifics of the proceedings. Similarly, the revocation of pro hac vice
is a discretionary action taking into account various factors,
including incompetence, unwillingness to abide by the Office's Rules of
Professional Conduct, prior findings of misconduct before the Office in
other proceedings, and incivility.
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The Board's past practice has required the filing of a motion by a
registered patent practitioner seeking pro hac vice representation
based upon a showing of: (1) How qualified the unregistered
practitioner is to represent the party in the proceeding when measured
against a registered practitioner, and, (2) whether the party has a
genuine need to have the particular unregistered practitioner represent
it during the proceeding. This practice has proven effective in the
limited number of contested cases where such requests have been
granted. The proposed rule, if adopted, would allow for this practice
in the new proceedings authorized by the Leahy-Smith America Invents
Act.
The proposed rules would provide a limited delegation to the Board
under 35 U.S.C. 2(b)(2) and 32 to regulate the conduct of counsel in
Board proceedings. The proposed rule would delegate to the Board the
authority to conduct counsel disqualification proceedings while the
Board has jurisdiction over a proceeding. The rule would also delegate
to the Chief Administrative Patent Judge the authority to make final a
decision to disqualify counsel in a proceeding before the Board for the
purposes of judicial review. This delegation would not derogate from
the Director the prerogative to make such decisions, nor would it
prevent the Chief Administrative Patent Judge from further delegating
authority to an administrative patent judge.
The Office considered broadly permitting practitioners not
registered to practice by the Office to represent parties in trial as
well as categorically prohibiting such practice. A prohibition on the
practice would be inconsistent with the Board's experience, and more
importantly, might result in increased costs particularly where a small
entity has selected its district court litigation team for
representation before the Board and has a patent review filed after
litigation efforts have commenced. Alternatively, broadly making the
practice available would create burdens on the Office in administering
the trials and in completing the trial within the established
timeframe, particularly if the selected practitioner does not have the
requisite skill. In weighing the desirability of admitting a
practitioner pro hac vice, the economic impact on the party in interest
would be considered which would tend toincrease the likelihood that a
small entity could be represented by a non-registered practitioner.
Accordingly, the alternatives to eliminate pro hac vice practice or to
permit it more broadly would have been inconsistent with objectives
of the Leahy-Smith America Invents Act that the Director, in prescribing
rules for the post-grant and covered business method patent reviews,
consider the effect of the rules on the economy, the integrity of the
patent system, the efficient administration of the Office, and the ability
of the Office to complete timely the instituted proceedings.
Threshold for Instituting a Review: The Office considered whether
the threshold for instituting a review could be set as low as or lower
than the threshold for ex parte reexamination. This alternative could
not be adopted in view of the statutory requirements in 35 U.S.C. 324.
Default Electronic Filing: The Office considered a paper filing
system and a mandatory electronic filing system (without any
exceptions) as alternatives to the proposed requirement that all papers
are to be electronically filed, unless otherwise authorized.
Based on the Office's experience, a paper based filing system
increases delay in processing papers, delay in public availability, and
the chance that a paper may be misplaced or made available to an
improper party if confidential. Accordingly, the alternative of a paper
based filing system would have been inconsistent with objectives of the
Leahy-Smith America Invents Act that the Director, in prescribing rules
for the post-grant and covered business method patent reviews, consider
the effect of the rules on the economy, the integrity of the patent
system, the efficient administration of the Office, and the ability of
the Office to complete timely the instituted proceedings.
An electronic filing system (without any exceptions) that is
rigidly applied would result in unnecessary cost and burdens,
particularly where a party lacks the ability to file electronically. By
contrast, if the proposed option is adopted, it is expected that the
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entity size and sophistication would be considered in determining
whether alternative filing methods would be authorized.
6. Identification, to the Extent Practicable, of All Relevant
Federal Rules Which May Duplicate, Overlap, or Conflict With the
Proposed Rules:
37 CFR 1.99 provides for the submission of information after
publication of a patent application during examination by third
parties.
37 CFR 1.171-1.179 provide for applications to reissue a patent to
correct errors, including where a claim in a patent is overly broad.
37 CFR 1.291 provides for the protest against the issuance of a
patent during examination.
37 CFR 1.321 provides for the disclaimer of a claim by a patentee.
37 CFR 1.501 and 1.502 provide for ex parte reexamination of
patents. Under these rules, a person may submit to the Office prior art
consisting of patents or printed publications that are pertinent to the
patentability of any claim of a patent, and request reexamination of
any claim in the patent on the basis of the cited prior art patents or
printed publications. Consistent with 35 U.S.C. 302-307, ex parte
reexamination rules provide a different threshold for initiation,
require the proceeding to be conducted by an examiner with a right of
appeal to the Patent Trial and Appeal Board, and allow for limited
participation by third parties.
37 CFR 1.902-1.997 provide for inter partes reexamination of
patents. Similar to ex parte reexamination, inter partes reexamination
provides a procedure in which a third party may request reexamination
of any claim in a patent on the basis of the cited prior art patents
and printed publication. The inter partes reexamination practice will
be eliminated, except for requests filed before the effective date of
September 16, 2012. See § 6(c)(3)(C) of the Leahy-Smith America
Invents Act.
Other countries have their own patent laws, and an entity desiring
a patent in a particular country must make an application for patent in
that country, in accordance with the applicable law. Although the
potential for overlap exists internationally, this cannot be avoided
except by treaty (such as the Paris Convention for the Protection of
Industrial Property, or the Patent Cooperation Treaty (PCT)).
Nevertheless, the Office believes that there are no other duplicative
or overlapping foreign rules.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be significant for purposes of
Executive Order 12866 (Sept. 30, 1993), as amended by Executive Order
13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007).
Based on the petition and other filing requirements for initiating
a review proceeding, the USPTO estimates the burden of the proposed
rules on the public to be $22,761,410 in fiscal year 2013 which
represents the sum of the estimated total annual (hour) respondent cost
burden ($20,405,610) plus the estimated total annual non-hour
respondent cost burden ($2,355,800) provided in Part O, Section II, of
this notice, infra.
The USPTO expect several benefits to flow from the Leahy-Smith
America Invents Act and these proposed rules. It is anticipated that
the proposed rules will reduce the time for reviewing patents at the
USPTO. Specifically, 35 U.S.C. 326(a) provides that the Director
prescribe regulations requiring a final determination by the Board
within one year of initiation, which may be extended for up to six
months for good cause. In contrast, currently for inter partes
reexamination, the average time from the filing to the publication of a
certificate ranged from 28.9 to 41.7 months during fiscal years 2009-
2011. See Reexaminations - FY 2011, http://www.uspto.gov/patents/
Reexamination_operational_statistic_through_FY2011Q4.pdf.
Likewise, it is anticipated that the proposed rules will minimize
duplication of efforts. In particular, the Leahy-Smith America Invents
Act provides more coordination between district court infringement
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litigation and post-grant or covered business method patent reviews to
reduce duplication of efforts and costs.
The AIPLA Report of the Economic Survey 2011 reports that the total
cost of patent litigation where the damages at risk are less than
$1,000,000 average $916,000, where the damages at risk are between
$1,000,000 and $25,000,000 average $2,769,000, and where the damages at
risk exceed $25,000,000 average $6,018,000. There may be a significant
reduction in overall burden if, as intended, the Leahy-Smith America
Invents Act and the proposed rules reduce the overlap between review at
the USPTO of issued patents and validity determination during patent
infringement actions. Data from the United States district courts
reveals that 2,830 patent cases were filed in 2006, 2,896 in 2007,
2,909 in 2008, 2,792 in 2009, and 3,301 in 2010. See U.S. Courts,
Judicial Business of the United States Courts, www.uscourts.gov/uscourts/
Statistics/JudicialBusiness/2010/appendices/C02ASep10.pdf (last visited
Nov. 11, 2011) (hosting annual reports for 1997 through 2010). Thus, the
Office estimates that no more than 3,300 patent cases (the highest number
of yearly filings between 2006 and 2010 rounded to the nearest 100) are
likely to be filed annually. The aggregate burden estimate above
($22,761,410) was not offset by a reduction in burden based on improved
coordination between district court patent litigation and the new inter
partes review proceedings.
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on
society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector, and the public as a whole,
and provided online access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996). This rulemaking carries out a
statute designed to lessen litigation. See H.R. Rep. No. 112-98, at 45-
48.
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I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not effect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801-808), prior to issuing any final rule, the United
States Patent and Trademark Office will submit a report containing the
final rule and other required information to the U.S. Senate, the U.S.
House of Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this notice are not expected to
result in an annual effect on the economy of 100 million dollars or
more, a major increase in costs or prices, or significant adverse
effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign based enterprises in domestic and export markets.
Therefore, this notice is not expected to result in a "major rule" as
defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes proposed in
this notice do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501-1571.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321-4370h.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501-3549) requires that the USPTO consider the impact of
paperwork and other information collection burdens imposed on the
public. This proposed rulemaking involves information collection
requirements which are subject to review by the Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C.
3501-3549). The collection of information involved in this notice has
been submitted to OMB under OMB control number 0651-00xx. In the Notice
"Rules of Practice for Trials before the Patent Trial and Appeal Board
and Judicial Review of Patent Trial and Appeal Board Decisions," RIN
0651-AC70, the information collection for all of the new trials
authorized by the Leahy-Smith America Invents Act were provided. In the
Notice "Changes to Implement Post-Grant Review Proceedings," RIN
0651-AC72, the information collection for post-grant review and covered
business method patent review combined authorized by the Leahy-Smith
America Invents Act were provided. This notice also provides the subset
of burden created by the covered business method patent review
provisions. The proposed collection will be available at the OMB's
Information Collection Review Web site (www.reginfo.gov/public/do/PRAMain).
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The USPTO is submitting the information collection to OMB for its
review and approval because this notice of proposed rulemaking will add
the following to a collection of information:
(1) Petitions to institute a post-grant review (§§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.22, 42.24(a)(2), 42.63, 42.65, and 42.201
through 42.205);
(2) petitions to institute a covered business method patent review
(§§ 42.5, 42.6, 42.8, 42.11, 42.13, 42.20, 42.21, 42.22,
42.24(a)(3), 42.63, 42.65, 42.203, 42.205, and 42.302 through 42.304);
(3) motions (§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.22,
42.24(a)(5), 42.51 through 42.54, 42.63, 42.64, 42.65, 42.221, 42.123,
and 42.223);
(4) oppositions (§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.23,
42.24(b), 42.51, 42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.207, and
42.220);
(5) replies provided for in 35 U.S.C. 321-329 (§§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.23, 42.24(c), 42.51, 42.52, 42.53, 42.54,
42.63, and 42.65).
The proposed rules also permit filing requests for oral argument
(§ 42.70) provided for in 35 U.S.C. 326(a)(10), requests for
rehearing (§ 42.71(c)), requests for adverse judgment (§ 42.73(b)),
and requests that a settlement be treated as business confidential
(§ 42.74(b)) provided for in 35 U.S.C. 327.
I. Abstract: The USPTO is required by 35 U.S.C. 131 and 151 to
examine applications and, when appropriate, issue applications as
patents.
Chapter 32 of title 35 U.S.C. in effect on September 16, 2012,
provides for post-grant review proceedings allowing third parties to
petition the USPTO to review the patentability of an issued patent
under any ground authorized under 35 U.S.C. 282(b)(2). If a trial is
initiated by the USPTO based on the petition, as authorized by the
USPTO, additional motions may be filed by the petitioner. A patent
owner may file a response to the petition and if a trial is instituted,
as authorized by the USPTO, may file additional motions.
Section 18 of the Leahy-Smith America Invents Act provides for a
transitional program for covered business method patents, which will
employ the standards and procedures of the post-grant review proceeding
with a few exceptions.
In estimating the number of hours necessary for preparing a
petition to institute a post-grant or covered business method patent
review, the USPTO considered the estimated cost of preparing a request
for inter partes reexamination ($46,000), the median billing rate
($340/hour), and the observation that the cost of inter partes
reexamination has risen the fastest of all litigation costs since 2009
in the AIPLA Report of the Economic Survey 2011. Since additional
grounds are provided in post-grant or covered business method patent
review, the Office estimates the cost of preparing a petition to
institute a review will be 33.333% more than the estimated cost of
preparing a request for inter partes reexamination, or $61,333.
In estimating the number of hours necessary for preparing motions
after instituting and participating in the review, the USPTO considered
the AIPLA Report of the Economic Survey 2011 which reported the average
cost of a party to a two-party interference to the end of the
preliminary motion phase ($322,000) and inclusive of all costs
($631,000). The Office considered that the preliminary motion phase is
a good proxy for patentability reviews since that is the period of
current contested cases before the trial section of the Board where
most patentability motions are currently filed.
The USPTO also reviewed recent contested cases before the trial
section of the Board to make estimates on the average number of motions
for any matter including priority, the subset of those motions directed
to non-priority issues, the subset of those motions directed to non-
priority patentability issues, and the subset of those motions directed
to patentability issues based on a patent or printed publication on the
basis of 35 U.S.C. 102 or 103. The review of current contested cases
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before the trial section of the Board indicated that approximately 15%
of motions were directed to prior art grounds, 18% of motions were
directed to other patentability grounds, 27% were directed to
miscellaneous issues, and 40% were directed to priority issues. It was
estimated that the cost per motion to a party in current contested
cases before the trial section of the Board declines because of overlap
in subject matter, expert overlap, and familiarity with the technical
subject matter. Given the overlap of subject matter, a proceeding with
fewer motions will have a somewhat less than proportional decrease in
costs since the overlapping costs will be spread over fewer motions.
It is estimated that the cost of an inter partes review would be
60% of the cost of current contested cases before the trial section of
the Board to the end of the preliminary motion period. An inter partes
review should have many fewer motions since only one party will have a
patent that is the subject of the proceeding (compared with each party
having at least a patent or an application in current contested cases
before the trial section of the Board). Moreover, fewer issues can be
raised since inter partes review will not have priority-related issues
that must be addressed in current contested cases before the trial
section of the Board. Consequently, a 60% weighting factor should
capture the typical costs of an inter partes review.
It is estimated that the cost of a post-grant or covered business
method patent review would be 75% of the cost of current contested
cases before the trial section of the Board to the end of the
preliminary motion period. A post-grant or covered business method
patent review should have many fewer motions since only one party will
have a patent that is the subject of the proceeding (compared with each
party having at least a patent or an application in current contested
cases before the trial section of the Board). Moreover, fewer issues
can be raised since post-grant and covered business method patent
reviews will not have the priority-related issues that must be
addressed in current contested cases before the trial section of the
Board before the priority phase. Again, a 75% weighting factor should
capture the typical costs of a post-grant or covered business method
patent review.
The title, description, and respondent description of the
information collection are shown below with an estimate of the annual
reporting burdens for the post-grant and covered business method patent
review provisions. Included in this estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information. The principal impact of
the proposed changes in this notice of proposed rulemaking is to
implement the changes to Office practice necessitated by §§
6(d) and 18 of the Leahy-Smith America Invents Act.
The public uses this information collection to request review and
derivation proceedings and to ensure that the associated fees and
documentation are submitted to the USPTO.
II. Data
Needs and Uses: The information supplied to the USPTO by a petition
to institute a review as well as the motions authorized following the
institution is used by the USPTO to determine whether to initiate a
review under 35 U.S.C. 324 and to prepare a final decision under 35
U.S.C. 328.
OMB Number: 0651-00xx.
Title: Patent Review and Derivation Proceedings.
Form Numbers: None.
Type of Review: New Collection.
Likely Respondents/Affected Public: Individuals or households,
businesses or other for profit, not-for-profit institutions, farms,
Federal Government, and state, local, or tribal governments.
Estimated Number of Respondents/Frequency of Collection: 100
respondents and 515 responses per year.
Estimated Time per Response: The USPTO estimates that it will take
the public from 0.1 to 180.4 hours to gather the necessary information,
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prepare the documents, and submit the information to the USPTO.
Estimated Total Annual Respondent Burden Hours: 60,016.5 hours per
year.
Estimated Total Annual (Hour) Respondent Cost Burden: $20,405,610
per year. The USPTO expects that the information in this collection
will be prepared by attorneys. Using the professional rate of $340 per
hour for attorneys in private firms, the USPTO estimates that the
respondent cost burden for this collection will be approximately
$20,405,610 per year (60,016.5 hours per year multiplied by $340 per
hour).
Estimated Total Annual Non-hour Respondent Cost Burden: $2,355,800
per year. There are no capital start-up or maintenance costs associated
with this information collection. However, this collection does have
annual (non-hour) costs in the form of filing fees. There are filing
fees associated with petitions for post-grant and covered business
method patent review and for requests to treat a settlement as business
confidential. The total fees for this collection are calculated in the
accompanying table. The USPTO estimates that the total fees associated
with this collection will be approximately $2,355,800 per year.
Therefore, the total estimated cost burden in fiscal year 2013 is
estimated to be $22,761,410 (the sum of the estimated total annual
(hour) respondent cost burden ($20,405,610) plus the estimated total
annual non-hour respondent cost burden ($2,355,800)).
Estimated time Estimated Estimated
for response annual annual burden
Item (hours) responses hours
Petition for post-grant or 180.4 50 9,020
covered business method
patent review
Reply to initial post-grant 100 45 4,500
or covered business
method patent review
Request for Reconsideration 80 14 1,120
Motions, replies and 130 342 44,460
oppositions after
institution in post-grant
or covered business method
patent review
Request for oral hearing 20 45 900
Request to treat a settlement 2 2 4
as business confidential
Request for adverse judgment, 1 10 10
default adverse judgment or
settlement
Request to make a settlement 1 2 2
agreement available
Notice of judicial review of 0.1 5 0.5
a Board decision (e.g.,
notice of appeal under
35 U.S.C. 142)
Totals 515 60,016.5
Estimated Estimated
annual annual filing
Item responses Fee amount costs
Petition for post-grant or 50 $47,100 $2,355,000
covered business method
patent review
Reply to post-grant or 45 0 0
covered business method
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patent review petition
Request for Reconsideration 14 0 0
Motions, replies and oppositions 342 0 0
after initiation in post-grant
or covered business method
patent review
Request for oral hearing 45 0 0
Request to treat a settlement 2 0 0
as business confidential
Request for adverse judgment, 10 0 0
default adverse judgment or
settlement
Request to make a settlement 2 400 800
agreement available
Notice of judicial review of a 5 0 0
Board decision (e.g., notice
of appeal under 35 U.S.C. 142)
Totals 515 $2,355,800
III. Solicitation
The agency is soliciting comments to: (1) Evaluate whether the
proposed information requirement is necessary for the proper
performance of the functions of the agency, including whether the
information will have practical utility; (2) evaluate the accuracy of
the agency's estimate of the burden; (3) enhance the quality, utility,
and clarity of the information to be collected; and (4) minimize the
burden of collecting the information on those who are to respond,
including by using appropriate automated, electronic, mechanical, or
other technological collection techniques or other forms of information
technology.
Interested persons are requested to send comments regarding this
information collection by April 10, 2012, to: (1) The Office of
Information and Regulatory Affairs, Office of Management and Budget,
New Executive Office Building, Room 10202, 725 17th Street NW.,
Washington, DC 20503, Attention: Nicholas A. Fraser, the Desk Officer
for the United States Patent and Trademark Office, and via email at
nfraser@omb.eop.gov; and (2) The Board of Patent Appeals and
Interferences by electronic mail message over the Internet addressed
to: post_grant_review@uspto.gov, or by mail addressed to: Mail Stop
Patent Board, Director of the United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of "Lead Judge Michael Tierney, Post-Grant Review Proposed
Rules."
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 42
Administrative practice and procedure, Inventions and patents,
Lawyers.
Proposed Amendments to the Regulatory Text
For the reasons stated in the preamble, the Under Secretary of
Commerce for Intellectual Property and Director of the United States
Patent and Trademark Office propose to amend 37 CFR part 42 as proposed
to be added in the February 9, 2012, issue of the Federal Register as
follows:
PART 42 - TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
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1. The authority citation for 37 CFR part 42 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316,
321-326 and Leahy-Smith America Invents Act, Pub. L. 112-29,
sections 6(c), 6(f), and 18, 125 Stat. 284, 304, 311, and 329
(2011).
2. A subpart C is added to read as follows:
Subpart C - Post-Grant Review
General
§
42.200 Procedure; pendency.
42.201 Who may petition for a post-grant review.
42.202 Time for filing.
42.203 Post-grant review fee.
42.204 Content of petition.
42.205 Service of petition.
42.206 Filing date.
42.207 Preliminary response to petition.
Instituting Post-Grant Review
42.208 Institution of post-grant review.
After Institution of Post-Grant Review
42.220 Patent owner response.
42.221 Amendment of the patent.
42.222 Multiple proceedings.
42.223 Filing of supplemental information.
42.224 Discovery.
Subpart C - Post-Grant Review
General
§ 42.200 Procedure; pendency.
(a) A post-grant review is a trial subject to the procedures set
forth in subpart A of this part.
(b) A claim in an unexpired patent shall be given its broadest
reasonable construction in light of the specification of the patent in
which it appears.
(c) A post-grant review proceeding shall be administered such that
pendency before the Board after institution is normally no more than
one year. The time can be extended by up to six months for good cause
by the Chief Administrative Patent Judge.
(d) Interferences commenced before September 16, 2012, shall
proceed under part 41 of this chapter except as the Chief
Administrative Patent Judge, acting on behalf of the Director, may
otherwise order in the interests of justice.
§ 42.201 Who may petition for a post-grant review.
A person who is not the owner of a patent may file with the Office
a petition to institute a post-grant review of the patent unless:
(a) Before the date on which the petition for review is filed, the
petitioner or real party in interest filed a civil action challenging
the validity of a claim of the patent; or
(b) The petitioner, the petitioner's real party in interest, or a
privy of the petitioner is estopped from challenging the claims on the
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grounds identified in the petition.
§ 42.202 Time for filing.
(a) A petition for a post-grant review of a patent must be filed no
later than the date that is nine months after the date of the grant of
a patent or of the issuance of a reissue patent. A petition, however,
may not request a post-grant review for a claim in a reissue patent
that is identical to or narrower than a claim in the original patent
from which the reissue patent was issued unless the petition is filed
not later than the date that is nine months after the date of the grant
of the original patent.
(b) The Director may impose a limit on the number of post-grant
reviews that may be instituted during each of the first four one-year
periods in which 35 U.S.C. 321 is in effect by providing notice in the
Office's Official Gazette or Federal Register. Petitions filed after an
established limit has been reached will be deemed untimely.
§ 42.203 Post-grant review fee.
(a) A post-grant review fee set forth in § 42.15(b) must
accompany the petition.
(b) No filing date will be accorded to the petition until full
payment is received.
§ 42.204 Content of petition.
In addition to the requirements of §§ 42.8 and 42.22, the
petition must set forth:
(a) Grounds for standing. The petitioner must certify that the
patent for which review is sought is available for post-grant review
and that the petitioner is not barred or estopped from requesting a
post-grant review of the patent.
(b) Identification of challenge. Provide a statement of the precise
relief requested for each claim challenged. The statement must identify
the following:
(1) The claim;
(2) The specific statutory grounds permitted under paragraph (2) or
(3) of 35 U.S.C. 282(b) on which the challenge to the claim is based;
(3) How the challenged claim is to be construed. Where the claim to
be construed contains a means-plus-function or step-plus-function
limitation as permitted under 35 U.S.C. 112, sixth paragraph, the
construction of the claim must identify the specific portions of the
specification that describe the structure, material, or acts
corresponding to each claimed function;
(4) How the construed claim is unpatentable under the statutory
grounds identified in paragraph (b)(2) of this section. Where the
grounds for unpatentability are based on prior art, the petition must
specify where each element of the claim is found in the prior art. For
all other grounds of unpatentability, the petition must identify the
specific part of the claim that fails to comply with the statutory
grounds raised and state how the identified subject matter fails to
comply with the statute; and
(5) The exhibit number of the supporting evidence relied upon to
support the challenge and state the relevance of the evidence to the
challenge raised, including identifying specific portions of the
evidence that support the challenge. The Board may exclude or give no
weight to the evidence where a party has failed to state its relevance
or to identify specific portions of the evidence that support the
challenge.
(c) A motion may be filed that seeks to correct a clerical or
typographical mistake in the petition. The grant of such a motion does
not change the filing date of the petition.
§ 42.205 Service of petition.
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In addition to the requirements of § 42.6, the petitioner must
serve the petition and exhibits relied upon in the petition as follows:
(a) The petition and supporting evidence must be served on the
patent owner at the correspondence address of record for the subject
patent. The petitioner may additionally serve the petition and
supporting evidence on the patent owner at any other address known to
the petitioner as likely to effect service.
(b) If the petitioner cannot effect service of the petition and
supporting evidence on the patent owner at the correspondence address
of record for the subject patent, the petitioner must immediately
contact the Board to discuss alternate modes of service.
§ 42.206 Filing date.
(a) Complete petition. A petition to institute a post grant review
will not be accorded a filing date until the petition satisfies all of
the following requirements:
(1) Complies with § 42.204 or § 42.304,
(2) Service of the petition on the correspondence address of record
as provided in § 42.205(a); and
(3) Is accompanied by the filing fee in § 42.15(b).
(b) Incomplete request. Where a party files an incomplete petition,
no filing date will be accorded and the Office will dismiss the request
if the deficiency in the petition is not corrected within the earlier
of either one month from the notice of an incomplete petition, or the
expiration of the statutory deadline in which to file a petition for
post-grant review.
§ 42.207 Preliminary response to petition.
(a) The patent owner may file a preliminary response to the
petition. The response is limited to setting forth the reasons why no
post-grant review should be instituted under 35 U.S.C. 324. The
response can include evidence except as provided in paragraph (c) of
this section. The preliminary response is an opposition for purposes of
determining page limits under § 42.24.
(b) Due date. The preliminary response must be filed no later than
two months after the date of a notice indicating that the request to
institute a post-grant review has been granted a filing date. A patent
owner may expedite the proceeding by filing an election to waive the
preliminary patent owner response.
(c) No new testimonial evidence. The preliminary response shall not
present new testimony evidence beyond that already of record.
(d) No amendments. The preliminary response shall not include any
amendment.
(e) Disclaim Patent Claims. The patent owner may file a statutory
disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a),
disclaiming one or more claims in the patent. No post-grant review will
be instituted based on disclaimed claims.
Instituting Post-Grant Review
§ 42.208 Institution of post-grant review.
(a) When instituting post-grant review, the Board may authorize the
review to proceed on all or some of the challenged claims and on all or
some of the grounds of unpatentability asserted for each claim.
(b) At any time prior to institution of post-grant review, the
Board may deny some or all grounds for unpatentability for some or all
of the challenged claims. Denial of a ground is a Board decision not to
institute post-grant review on that ground.
(c) Sufficient grounds. Post-grant review shall not be instituted
for a ground of unpatentability, unless the Board decides that the
petition supporting the ground would, if unrebutted, demonstrate that
it is more likely than not that at least one of the claims challenged
in the petition is unpatentable. The Board's decision will take into
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account a preliminary patent owner response where such a response is
filed.
(d) Additional grounds. Sufficient grounds under § 42.208(c)
may be a showing that the petition raises a novel or unsettled legal
question that is important to other patents or patent applications.
After Institution of Post-Grant Review
§ 42.220 Patent owner response.
(a) Scope. A patent owner may file a response to the petition
addressing any ground for unpatentability not already denied. A patent
owner response is filed as an opposition and is subject to the page
limits provided in § 42.24.
(b) Due date for response. If no date for filing a patent owner
response to a petition is provided in a Board order, the default date
for filing a patent owner response is two months from the date the
post-grant review is instituted.
§ 42.221 Amendment of the patent.
(a) A patent owner may file one motion to amend a patent but only
after conferring with the Board. Any additional motions to amend may
not be filed without Board authorization.
(b) A motion to amend must set forth:
(1) The support in the original disclosure of the patent for each
claim that is added or amended; and
(2) The support in an earlier filed disclosure for each claim for
which benefit of the filing date of the earlier filed disclosure is
sought.
(c) A motion to amend the claims of a patent will not be authorized
where:
(1) The amendment does not respond to a ground of unpatentability
involved in the trial; or
(2) The amendment seeks to enlarge the scope of the claims of the
patent or introduce new subject matter.
§ 42.222 Multiple proceedings.
Where another matter involving the patent is before the Office, the
Board may during the pendency of the post-grant review enter any
appropriate order regarding the additional matter including providing
for the stay, transfer, consolidation, or termination of any such
matter.
§ 42.223 Filing of supplemental information.
Once a trial has been instituted, a petitioner may request
authorization to file a motion identifying supplemental information
relevant to a ground for which the trial has been instituted. The
request must be made within one month of the date the trial is
instituted.
§ 42.224 Discovery.
Notwithstanding the discovery provisions of subpart A:
(a) Requests for additional discovery may be granted upon a showing
of good cause as to why the discovery is needed; and
(b) Discovery is limited to evidence directly related to factual
assertions advanced by either party in the proceeding.
January 31, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
| Changes to Implement Transitional Program for Covered Business Method Patents |
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 42
[Docket No. PTO-P-2011-0085]
RIN 0651-AC73
Changes To Implement Transitional Program for
Covered Business Method Patents
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office or
USPTO) proposes new rules to implement the provisions of the Leahy-
Smith America Invents Act that create a new transitional post-grant
review proceeding for covered business method patents to be conducted
before the Patent Trial and Appeal Board (Board). These provisions of
the Leahy-Smith America Invents Act will take effect on September 16,
2012, one year after the date of enactment. These provisions and any
regulations issued under these provisions will be repealed on September
16, 2020, with respect to any new petitions under the transitional
program.
DATES: The Office solicits comments from the public on this proposed
rulemaking. Written comments must be received on or before April 10,
2012 to ensure consideration.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: TPCBMP_Rules@uspto.gov. Comments may also be
submitted by postal mail addressed to: Mail Stop Patent Board, Director
of the United States Patent and Trademark Office, P.O. Box 1450,
Alexandria, VA 22313-1450, marked to the attention of "Lead Judge
Michael Tierney, Covered Business Method Patent Review Proposed
Rules."
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov/) for additional
instructions on providing comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments are preferred to be submitted in
plain text, but also may be submitted in ADOBE® portable
document format or MICROSOFT WORD® format. Comments not
submitted electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE® portable
document format.
The comments will be available for public inspection at the Board
of Patent Appeals and Interferences, currently located in Madison East,
Ninth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also
will be available for viewing via the Office's Internet Web site
(http://www.uspto.gov/). Because comments will be made available for
public inspection, information that the submitter does not desire to
make public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Michael Tierney, Lead Administrative
Patent Judge, Sally Medley, Administrative Patent Judge, Robert Clarke,
Administrative Patent Judge, and Joni Chang, Administrative Patent
Judge, Board of Patent Appeals and Interferences, by telephone at (571)
272-9797.
SUPPLEMENTARY INFORMATION: On September 16, 2011, the Leahy-Smith
America Invents Act was enacted into law (Pub. L. 112-29, 125 Stat. 284
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(2011)). The purpose of the Leahy-Smith America Invents Act and these
proposed regulations is to establish a more efficient and streamlined
patent system that will improve patent quality and limit unnecessary
and counterproductive litigation costs. The preamble of this notice
sets forth in detail the procedures by which the Board will conduct
transitional covered business method patent review proceedings. The
USPTO is engaged in a transparent process to create a timely, cost-
effective alternative to litigation. Moreover, the rulemaking process
is designed to ensure the integrity of the trial procedures. See 35
U.S.C. 326(b). The proposed rules would provide a set of rules relating
to Board trial practice for transitional covered business method review
proceedings.
Section 18 of the Leahy-Smith America Invents Act provides that the
Director will establish regulations establishing and implementing a
transitional program for the review of covered business method patents.
Section 18(a)(1) of the Leahy-Smith America Invents Act provides that
the transitional proceeding will be regarded as, and will employ the
standards and procedures of, a post-grant review under chapter 32 of
title 35, United States Code, subject to certain exceptions. For
instance, a petitioner in a covered business method patent review may
request to cancel as unpatentable one or more claims of a patent on any
ground that could be raised under 35 U.S.C. 282(b)(2) or (3) (relating
to invalidity of the patent or any claim) (see 35 U.S.C. 321(b)); and
the determination by the Director whether to institute a covered
business method patent review will be final and nonappealable (see 35
U.S.C. 324(e)). Section 18(a)(1)(A) of the Leahy-Smith America Invents
Act provides that 35 U.S.C. 321(c) and 35 U.S.C. 325(b), (e)(2), and
(f) will not apply to a transitional proceeding.
Section 18(a)(1)(B) of the Leahy-Smith America Invents Act
specifies that a person may not file a petition for a transitional
proceeding with respect to a covered business method patent unless the
person or person's real party in interest or privy has been sued for
infringement of the patent or has been charged with infringement under
that patent.
Section 18(a)(1)(C) of the Leahy-Smith America Invents Act further
provides that limited prior art shall apply for those challenged
covered business method patents granted under first-to-invent
provisions. Specifically, section 18(a)(1)(C) provides:
A petitioner in a transitional proceeding who
challenges the validity of 1 or more claims in a covered business
method patent on a ground raised under section 102 or 103 of title
35, United States Code, as in effect on the day before the effective
date set forth in section 3(n)(1), may support such ground only on
the basis of -
prior art that is described by section 102(a) of such
title (as in effect on the day before such effective date); or
prior art that -
° discloses the invention more than 1 year before the date
of the application for patent in the United States; and
° would be described by section 102(a) of such title (as in
effect on the day before the effective date set forth in section
3(n)(1)) if the disclosure had been made by another before the
invention thereof by the applicant for patent.
Section 18 of the Leahy-Smith America Invents Act provides that the
Director may institute a transitional proceeding only for a patent that
is a covered business method patent. Section 18(d)(1) of the Leahy-
Smith America Invents Act specifies that a covered business method
patent is a patent that claims a method or corresponding apparatus for
performing data processing or other operations used in the practice,
administration, or management of a financial product or service, except
that the term does not include patents for technological inventions.
Section 18(d)(2) provides that the Director will issue regulations for
determining whether a patent is for a technological invention.
The Leahy-Smith America Invents Act provides that the transitional
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program for the review of covered business method patents will take
effect on September 16, 2012, one year after the date of enactment, and
applies to any covered business method patent issued before, on, or
after September 16, 2012. Section 18 of the Leahy-Smith America Invents
Act and the regulations issued under § 18 are repealed on September
16, 2020. Section 18 and the regulations issued will continue to apply
after September 16, 2020, to any petition for a transitional proceeding
that is filed before September 16, 2020. The Office will not consider a
petition for a transitional proceeding that is filed on or after
September 16, 2020.
Discussion of Specific Rules
This notice proposes new rules to implement the provisions of the
Leahy-Smith America Invents Act for the transitional program for
covered business method patents. As previously discussed, § 18(a)(1)
of the Leahy-Smith America Invents Act provides that the
Director shall issue regulations establishing and implementing a
transitional post-grant review proceeding for the review of covered
business method patents. In particular, this notice proposes to add a
new subpart D to 37 CFR part 42 to provide rules specific to
transitional post-grant review of covered business method patents.
Pursuant to § 18(d)(2) of the Leahy-Smith America Invents Act, the
Office in a separate rulemaking is proposing the definition of a
technological invention (RIN 0651-AC75).
Additionally, the Office in a separate rulemaking is proposing to
add part 42, including subpart A, (0651-AC70) that would include a
consolidated set of rules relating to Board trial practice. More
specifically, the proposed subpart A of part 42 would set forth the
policies, practices, and definitions common to all trial proceedings
before the Board. The proposed rules in the instant notice and
discussion below may reference the proposed rules in subpart A of part
42. Furthermore, the Office in separate rulemakings is proposing to add
a new subpart B to 37 CFR part 42 (RIN 0651-AC71) to provide rules
specific to inter partes review, a new subpart C to 37 CFR part 42 (RIN
0651-AC72) to provide rules specific to post-grant review, and a new
subpart E to 37 CFR part 42 (RIN 0651-AC74) to provide rules specific to
derivation. The notices of proposed rulemaking are available on the
USPTO Internet Web site at http://www.uspto.gov/.
Title 37 of the Code of Federal Regulations, Chapter I, Part 42,
Subpart D, entitled "Transitional Program for Covered Business Method
Patents" is proposed to be added as follows:
Section 42.300: Proposed § 42.300 would set forth policy
considerations for covered business method patent review proceedings.
Proposed § 42.300(a) would provide that a covered business
method patent review is a trial and subject to the rules set forth in
subpart A and also subject to the post-grant review procedures set
forth in subpart C except for §§ 42.200, 42.201, 42.202, and
42.204. This is consistent with § 18(a)(1) of the Leahy-Smith
America Invents Act, which provides that the transitional proceeding
shall be regarded as, and shall employ the standards and procedures of,
a post-grant review with certain exceptions.
Proposed § 42.300(b) would provide that a claim in an unexpired
patent shall be given its broadest reasonable construction in light of
the specification in which it appears. This proposed rule would be
consistent with longstanding established principles of claim
construction before the Office. See, e.g., In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). As explained in Yamamoto, a party's
ability to amend claims to avoid prior art distinguishes Office
proceedings from district court proceedings and justifies the difficult
standard for claim interpretation. Yamamoto, 740 F.2d at 1572.
Proposed § 42.300(c) would provide a one-year timeframe for
administering the proceeding after institution, with a six-month
extension for good cause. This proposed rule is consistent with 35
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U.S.C. 326(a)(11), which sets forth statutory timeframes for post-grant
review.
Proposed § 42.300(d) would provide that the rules in subpart D
are in effect until September 15, 2020, except that the rules shall
continue to apply to any covered business method patent review filed
before the date of repeal. This is consistent with § 18(a)(3) of
the Leahy-Smith America Invents Act, which provides that the
regulations issued are repealed effective upon the expiration of the
eight-year period beginning on the date that the regulations take
effect.
Section 42.301: Proposed § 42.301 would provide definitions
specific to covered business method patent reviews.
Proposed § 42.301(a) would adopt the definition for covered
business method patents provided in § 18(d)(1) of the Leahy-Smith
America Invents Act. Specifically, the proposed definition would
provide that covered business method patent means a patent that claims
a method or corresponding apparatus for performing data processing or
other operations used in the practice, administration, or management of
a financial product or service, except that the term does not include
patents for technological inventions.
Pursuant to § 18(d)(2) of the Leahy-Smith America Invents Act,
the Office in a separate rulemaking is proposing the definition of a
technological invention, which would be set forth in proposed
§ 42.301(b).
Section 42.302: Proposed § 42.302 would identify who may file a
petition for a covered business method patent review.
Proposed § 42.302(a) would provide that a petitioner may not
file a petition to institute a covered business method patent review of
the patent unless the petitioner, the petitioner's real party in
interest, or a privy of the petitioner has been sued for infringement
of the patent or has been charged with infringement under that patent.
This proposed rule is consistent with § 18(a)(1)(B) of the Leahy-
Smith America Invents Act.
Proposed § 42.302(b) would provide that a petitioner may not
file a petition to institute a covered business method patent review of
the patent where the petitioner, the petitioner's real party in
interest, or a privy of the petitioner is estopped from challenging the
claims on the grounds identified in the petition. The proposed rule is
consistent with 35 U.S.C. 325(e)(1), which provides for estoppel based
upon a final written decision in a post-grant review.
Section 42.303: Proposed § 42.303 would provide that a petition
for a covered business method patent review may be filed at any time
prior to or after the time a petition for a post-grant review of the
patent would satisfy the requirements of 35 U.S.C. 321(c). This
proposed rule is consistent with § 18(a)(2) of the Leahy-Smith
America Invents Act.
Section 42.304: Proposed § 42.304 would provide for the content
of petitions to institute a covered business method patent review. The
proposed rule is consistent with 35 U.S.C. 322(a)(4), which allows the
Director to prescribe regulations concerning the information provided
with the petition to institute a covered business patent review.
Proposed § 42.304(a) would provide that a petition under this
section must demonstrate that the petitioner has grounds for standing.
To establish standing, a petitioner, at a minimum, would be required to
certify that the patent is available for covered business method patent
review and that the petitioner meets the eligibility requirements of
§ 42.302. This proposed requirement attempts to ensure that a party
has standing to file the covered business method patent review and
would help prevent spuriously instituted reviews. Facially improper
standing would be a basis for denying the petition without proceeding
to the merits of the decision.
Proposed § 42.304(b) would require that the petition identify
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the precise relief requested for the claims challenged. Specifically,
the proposed rule would require that the petition identify each claim
being challenged, the specific grounds on which each claim is
challenged, how the claims are to be construed, why the claims as
construed are unpatentable, and the exhibit numbers of the evidence
relied upon with a citation to the portion of the evidence that is
relied upon to support the challenge. This proposed rule is consistent
with 35 U.S.C. 322(a)(3), which requires that the petition identify, in
writing and with particularity, each claim challenged, the grounds on
which the challenge to each claim is based, and the evidence supporting
the challenge. It is also consistent with 35 U.S.C. 322(a)(4), which
allows the Director to require additional information as part of the
petition. The proposed rule would provide an efficient means for
identifying the legal and factual basis supporting a prima facie case
of relief and would provide the patent owner with a minimum level of
notice as to the basis for the challenge to the claims.
Proposed § 42.304(c) would provide that a petitioner seeking to
correct clerical or typographical mistakes could file a motion to
correct the mistakes. The proposed rule would also provide that the
grant of such a motion would not alter the filing date of the petition.
Rulemaking Considerations
A. Administrative Procedure Act (APA): This notice proposes rules
of practice concerning the procedure for requesting a covered business
method patent review, and the trial process after
initiation of such a review. The changes being proposed in this notice
do not change the substantive criteria of patentability. These proposed
changes involve rules of agency practice and procedure and/or
interpretive rules. See Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690
(DC Cir. 2001) (rules governing an application process are procedural
under the Administrative Procedure Act); Inova Alexandria Hosp. v.
Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals
were procedural where they did not change the substantive standard for
reviewing claims); Nat'l Org. of Veterans' Advocates v. Sec'y of
Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that
clarifies interpretation of a statute is interpretive).
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law), and
thirty-day advance publication is not required pursuant to 5 U.S.C.
553(d) (or any other law). See Cooper Techs. Co. v. Dudas, 536 F.3d
1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35
U.S.C. 2(b)(2)(B), does not require notice and comment rulemaking for
"interpretative rules, general statements of policy, or rules of
agency organization, procedure, or practice") (quoting 5 U.S.C.
553(b)(A)). The Office, however, is publishing these changes and the
Initial Regulatory Flexibility Act analysis, below, for comment as it
seeks the benefit of the public's views on the Office's proposed
implementation of these provisions of the Leahy-Smith America Invents
Act.
B. Regulatory Flexibility Act: The Office estimates that 50
petitions for covered business method patent review will be filed in
fiscal year 2013. This will be the first fiscal year in which the
review proceeding will be available for an entire fiscal year. The
estimated number of covered business method patent review petitions is
based on the number of inter partes reexamination requests filed in
fiscal year 2011 for patents having an original classification in class
705 of the United States Patent Classification System. Class 705 is the
classification for patents directed to data processing in the following
areas: financial, business practice, management, or cost/price
determination. See
http://www.uspto.gov/web/patents/classification/uspc705/sched705.pdf.
The following is the class definition and description for Class
705:
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This is the generic class for apparatus and corresponding
methods for performing data processing operations, in which there is
a significant change in the data or for performing calculation
operations wherein the apparatus or method is uniquely designed for
or utilized in the practice, administration, or management of an
enterprise, or in the processing of financial data.
This class also provides for apparatus and corresponding methods
for performing data processing or calculating operations in which a
charge for goods or services is determined.
This class additionally provides for subject matter described in
the two paragraphs above in combination with cryptographic apparatus
or method.
Subclasses 705/300-348 were established prior to complete
reclassification of all project documents. Documents that have not
yet been reclassified have been placed in 705/1.1. Until
reclassification is finished a complete search of 705/300-348 should
include a search of 705/1.1. Once the project documents in 705/1.1
have been reclassified they will be moved to the appropriate
subclasses and this note will be removed.
Scope of the Class
1. The arrangements in this class are generally used for
problems relating to administration of an organization, commodities
or financial transactions.
2. Mere designation of an arrangement as a "business machine"
or a document as a "business form" or "business chart" without
any particular business function will not cause classification in
this class or its subclasses.
3. For classification herein, there must be significant claim
recitation of the data processing system or calculating computer and
only nominal claim recitation of any external art environment.
Significantly claimed apparatus external to this class, claimed in
combination with apparatus under the class definition, which perform
data processing or calculation operations are classified in the
class appropriate to the external device unless specifically
excluded therefrom.
4. Nominally claimed apparatus external to this class in
combination with apparatus under the class definition is classified
in this class unless provided for in the appropriate external class.
5. In view of the nature of the subject matter included herein,
consideration of the classification schedule for the diverse art or
environment is necessary for proper search.
See Classification Definitions (Feb. 2011) available at
http://www.uspto.gov/web/patents/classification/uspc705/defs705.htm.
Accordingly, patents subject to covered business method patent
review are anticipated to be typically classifiable in Class 705. It is
anticipated that the number of patents in Class 705 that do not qualify
as covered business method patents would approximate the number of
patents classified in other classes that do qualify.
The Office received 20 requests for inter partes reexamination of
patents classified in Class 705 in fiscal year 2011. The Office in
estimating the number of petitions for covered business method patent
review to be higher than 20 requests due to an expansion of the grounds
for which review may be requested including subject matter eligibility
grounds, the greater coordination with litigation, and the provision
that patents will be eligible for the proceeding regardless of filing
date of the application which resulted in the patent.
The Office has reviewed the entity status of patents for which
inter partes reexamination was requested from October 1, 2000, to
September 23, 2011. This data only includes filings granted a filing
date in the particular year rather than filings in which a request was
received in the year. The first inter partes reexamination was filed on
July 27, 2001. A summary of that review is provided in Table 1 below.
As shown by Table 1, patents known to be owned by a small entity
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represented 32.79% of patents for which inter partes reexamination was
requested. Based on an assumption that the same percentage of patents
owned by small entities will be subject to covered business method
patent review, it is estimated that 16 petitions for covered business
method patent review would be filed to seek review of patents owned by
a small entity in fiscal year 2013, the first full fiscal year that
these proceedings will be available.
Table 1 - Inter partes Reexamination Requests Filed
With Parent Entity Type *
Inter partes Number filed where Percent small
examination parent patent is entity type of
Fiscal year requests filed small entity type total
2011 329 123 37.39
2010 255 94 36.86
2009 240 62 25.83
2008 155 52 33.55
2007 127 35 27.56
2006 61 17 27.87
2005 59 18 30.51
2004 26 5 19.23
2003 21 12 57.14
2002 4 1 25.00
2001 1 0 0.00
Totals 1,278 419 32.79
* Small entity status determined by reviewing preexamination small entity
indicator for the parent patent.
Based on the number of patents issued during fiscal years 1995
through 1999 that paid the small entity third stage maintenance fee,
the number of patents issued during fiscal years 2000 through 2003 that
paid the small entity second stage maintenance fee, the number of
patents issued during fiscal years 2004 through 2007 that paid the
first stage maintenance fee, and the number of patents issued during
fiscal years 2008 through 2011 that paid a small entity issue fee,
there are no less than 375,000 patents owned by small entities in force
as of October 1, 2011.
Furthermore, the Office recognizes that there would be an offset to
this number for patents that expire earlier than 20 years from their
filing date due to a benefit claim to an earlier application or due to
a filing of a terminal disclaimer. The Office likewise recognizes that
there would be an offset in the opposite manner due to the accrual of
patent term extension and adjustment. The Office, however, does not
maintain data on the date of expiration by operation of a terminal
disclaimer. Therefore, the Office has not adjusted the estimate of
375,000 patents owned by small entities in force as of October 1, 2011.
While the Office maintains information regarding patent term extension
and adjustment accrued by each patent, the Office does not collect data
on the expiration date of patents that are subject to a terminal
disclaimer. As such, the Office has not adjusted the estimated of
375,000 patents owned by small entities in force as of October 1, 2011,
for accrual of patent term extension and adjustment, because in view of
the incomplete terminal disclaimer data issue, would be incomplete and
any estimate adjustment would be administratively burdensome. Thus, it
is estimated that the number of small entity patents in force in fiscal
year 2013 will be at least 375,000.
Based on the estimated number of patents in force, the number of
small entity owned patents impacted by covered business method patent
review in fiscal year 2013 (16 patents) would be less than 0.005% (16/
375,000) of all patents in force that are owned by small entities. The
USPTO nonetheless has undertaken an Initial Regulatory Flexibility Act
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Analysis of the proposed rule.
1. Description of the Reasons That Action by the Office Is Being
Considered: On September 16, 2011, the Leahy-Smith America Invents Act
was enacted into law (Pub. L. 112-29, 125 Stat. 284 (2011)). Section 18
of the Leahy-Smith America Invents Act provides for a transitional
program for covered business method patents which will employ the
standards and procedures of the post-grant review proceeding with a few
exceptions. For the implementation, § 6(f) of the Leahy-Smith
America Invents Act requires that the Director issue regulations to
carry out chapter 32 of title 35, United States Code, within one year
after the date of enactment. Public Law 112-29, § 6(f), 125 Stat.
284, 311 (2011).
2. Succinct Statement of the Objectives of, and Legal Basis for,
the Proposed Rules: The proposed rules seek to implement covered
business method patent review as authorized by the Leahy-Smith America
Invents Act. The Leahy-Smith America Invents Act requires that the
Director prescribe rules for the covered business method patent reviews
that result in a final determination not later than one year after the
date on which the Director notices the institution of a proceeding. The
one-year period may be extended for not more than 6 months if good
cause is shown. See 35 U.S.C. 326(a)(11). The Leahy-Smith America
Invents Act also requires that the Director, in prescribing rules for
covered business method patent reviews, consider the effect of the
rules on the economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to complete
timely the instituted proceedings. See 35 U.S.C. 326(b). Consistent
with the time periods provided in 35 U.S.C. 326(a)(11), the proposed
rules are designed to, except where good cause is shown to exist,
result in a final determination by the Patent Trial and Appeal Board
within one year of the notice of initiation of the review. This one-
year review will enhance the effect on the economy, and improve the
integrity of the patent system and the efficient administration of the
Office.
3. Description and Estimate of the Number of Affected Small
Entities: The Small Business Administration (SBA) small business size
standards applicable to most analyses conducted to comply with the
Regulatory Flexibility Act are set forth in 13 CFR 121.201. These
regulations generally define small businesses as those with fewer than
a specified maximum number of employees or less than a specified level
of annual receipts for the entity's industrial sector or North American
Industry Classification System (NAICS) code. As provided by the
Regulatory Flexibility Act, and after consultation with the Small
Business Administration, the Office formally adopted an alternate size
standard as the size standard for the purpose of conducting an analysis
or making a certification under the Regulatory Flexibility Act for
patent-related regulations. See Business Size Standard for Purposes of
United States Patent and Trademark Office Regulatory Flexibility
Analysis for Patent-Related Regulations, 71 FR 67109 (Nov. 20, 2006),
1313 Off. Gaz. Pat. Office 60 (Dec. 12, 2006). This alternate small
business size standard is SBA's previously established size standard
that identifies the criteria entities must meet to be entitled to pay
reduced patent fees. See 13 CFR 121.802. If patent applicants identify
themselves on a patent application as qualifying for reduced patent
fees, the Office captures this data in the Patent Application Location
and Monitoring (PALM) database system, which tracks information on each
patent application submitted to the Office.
Unlike the SBA small business size standards set forth in 13 CFR
121.201, the size standard for USPTO is not industry-specific. The
Office's definition of a small business concern for Regulatory
Flexibility Act purposes is a business or other concern that: (1) Meets
the SBA's definition of a "business concern or concern" set forth in
13 CFR 121.105; and (2) meets the size standards set forth in 13 CFR
121.802 for the purpose of paying reduced patent fees, namely an
entity: (a) Whose number of employees, including affiliates, does not
exceed 500 persons; and (b) which has not assigned, granted, conveyed,
or licensed (and is under no obligation to do so) any rights in the
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invention to any person who made it and could not be classified as an
independent inventor, or to any concern which would not qualify as a
non-profit organization or a small business concern under this
definition. See Business Size Standard for Purposes of United States
Patent and Trademark Office Regulatory Flexibility Analysis for Patent-
Related Regulations, 71 FR at 67112 (Nov 20, 2006), 1313 Off. Gaz. Pat.
Office at 63 (Dec. 12, 2006).
As discussed above, it is anticipated that 50 petitions for covered
business method patent review will be filed in fiscal year 2013. The
Office has reviewed the percentage of patents for which inter partes
reexamination was requested from October 1, 2000 to September 23, 2011.
A summary of that review is provided in Table 1 above. As demonstrated
by Table 1, patents known to be owned by a small entity represent
32.79% of patents for which inter partes reexamination was requested.
Based on an assumption that the same percentage of patents owned by
small entities will be subject to the new review proceedings, it is
estimated that 16 patents owned by small entities would be affected by
covered business method patent review.
The USPTO estimates that 2.5% of patent owners will file a request
for adverse judgment prior to a decision to institute and that another
2.5% will file a request for adverse judgment or fail to participate
after initiation. Specifically, an estimated 2 patent owners will file
a request for adverse judgment or fail to participate after institution
in covered business method proceedings. Based on the percentage of
small entity owned patents that were the subject of inter partes
reexamination (32.79%) from October 1, 2000 to September 23, 2011, it
is estimated that 1 small entity will file such requests or fail to
participate in covered business method patent review.
Under the proposed rules, prior to determining whether to institute
a review, the patent owner may file an optional patent owner
preliminary response to the petition. Given the new time period
requirements to file review petitions relative to patent enforcement
proceedings and the desire to avoid the cost of a trial and delays to
related infringement actions, it is anticipated that 90% of petitions,
other than those for which a request for adverse judgment is filed,
will result in the filing of a patent owner preliminary response.
Specifically, the Office estimates that 45 patent owners will file a
preliminary response to a covered business method petition. Based on
the percentage of small entity owned patents that were the subject of
inter partes reexamination (32.79%), it is estimated that 15 small
entities will file a preliminary response to a covered business method
patent review petition filed in fiscal year 2013.
Under the proposed rules, the Office will determine whether to
institute a trial within three months after the earlier of: (1) The
submission of a patent owner preliminary response, (2) the waiver of
filing a patent owner preliminary response, or (3) the expiration of
the time period for filing a patent owner preliminary response. If the
Office decides not to institute a trial, the petitioner may file a
request for reconsideration of the Office's decision. In estimating the
number of requests for reconsideration, the Office considered the
percentage of inter partes reexaminations that were denied relative to
those that were ordered (24 divided by 342, or 7%) in fiscal year 2011.
See Reexamination - FY 2011, http://www.uspto.gov/patents/Reexamination_
operational_statistic_through_FY2011Q4.pdf. The Office also considered
the impact of: (1) Patent owner preliminary responses under newly
authorized in 35 U.S.C. 323, (2) the enhanced thresholds for instituting
reviews set forth in 35 U.S.C. 324(a), which would tend to increase the
likelihood of dismissing a petition for review, and (3) the more
restrictive time period for filing a petition for review in 35 U.S.C.
325(b), which would tend to reduce the likelihood of dismissing a petition.
Based on these considerations, it is estimated that 10% of the petitions
for review (5 divided by 49) would be dismissed.
During fiscal year 2011, the Office issued 21 decisions following a
request for reconsideration of a decision on appeal in inter partes
reexamination. The average time from original decision to decision on
reconsideration was 4.4 months. Thus, the decisions on reconsideration
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were based on original decisions issued from July 2010 until June 2011.
During this time period, the Office mailed 63 decisions on appeals in
inter partes reexamination. See BPAI Statistics - Receipts and
Dispositions by Technology Center, http://www.uspto.gov/ip/boards/bpai/
stats/receipts/index.jsp (monthly data). Based on the assumption that
the same rate of reconsideration (21 divided by 63 or 33.333%) will
occur, the Office estimates that 2 requests for reconsideration will be
filed. Based on the percentage of small entity owned patents that were
the subject of inter partes reexamination (32.79%), it is estimated
that 1 small entity will file a request for a reconsideration of a
decision dismissing the petition for post-grant or covered business
method patent review filed in fiscal year 2013.
The Office reviewed motions, oppositions, and replies in a number
of contested trial proceedings before the trial section of the Board.
The review included determining whether the motion, opposition, and
reply were directed to patentability grounds and non-priority non-
patentability grounds. Based on the review, it is anticipated that
covered business method patent reviews will have an average of 8.89
motions, oppositions, and replies per trial after institution.
Settlement is estimated to occur in 20% of instituted trials at various
points of the trial. In the trials that are settled, it is estimated
that only 50% of the noted motions, oppositions, and replies would be
filed.
After a trial has been instituted but prior to a final written
decision, parties to a covered business method patent review may
request an oral hearing. It is anticipated that 45 requests for oral
hearings will be filed based on the number of requests for oral
hearings in inter partes reexamination, the stated desirability for
oral hearings during the legislative process, and the public input
received prior to this notice of proposed rulemaking. Based on the
percentage of small entity owned patents that were the subject of inter
partes reexamination (32.79%), it is estimated that 15 small entities
will file a request for oral hearing in the covered business method
patent reviews instituted in fiscal year 2013.
Parties to a covered business method patent review may file
requests to treat a settlement as business confidential, and request
for adverse judgment. A written request to make a settlement agreement
available may also be filed. Given the short time period set for
the alternative dispute resolution options will be infrequently used.
The Office estimates that 2 requests to treat a settlement as business
confidential, and 10 requests for adverse judgment, default adverse
judgment, or settlement notices will be filed. The Office also
estimatesthat 2 requests to make a settlement available will be filed.
Based on the percentage of small entity owned patents that were the
subject of inter partes reexamination (32.79%), it is estimated that 1
small entity will file a request to treat a settlement as business
confidential and 3 small entities will file a request for adverse
judgment, default adverse judgment notices, or settlement notices in
the reviews instituted in fiscal year 2013.
Parties to a covered business method patent review may seek
judicial review of the final decision of the Board. Historically, 33%
of examiner's decisions in inter partes reexamination proceedings have
been appealed to the Board. It is anticipated that 16% of final
decisions of the Board would be appealed. The reduction in appeal rate
is based on the higher threshold for institution, the focused process,
and the experience of the Board in conducted contested cases.
Therefore, it is estimated that 5 parties would seek judicial review of
the final decisions of the Board in covered business method patent
reviews instituted in fiscal year 2013. Furthermore, based on the
percentage of small entity owned patents that were the subject of inter
partes reexamination (32.79%), it is estimated that 2 small entities
would seek judicial review of final decisions of the Board in the
covered business method patent reviews instituted in fiscal year 2013.
4. Description of the Reporting, Recordkeeping, and Other
Compliance Requirements of the Proposed Rule, Including an Estimate of
the Classes of Small Entities Which Will Be Subject to the Requirement
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and the Type of Professional Skills Necessary for Preparation of the
Report or Record: Covered business method patent reviews would be
limited to business method patents that are not patents for
technological inventions. Under the proposed rules, a person who is not
the owner of a patent may file a petition to institute a review of the
patent, with a few exceptions. Given this, it is anticipated that a
petition for review is likely to be filed by an entity practicing in
the business method field for covered business methods.
Preparation of the petition would require analyzing the patent
claims, locating evidence supporting arguments of unpatentability, and
preparing the petition seeking review of the patent. This notice
provides the proposed procedural requirements that are common for the
new trials. Additional requirements are provided in contemporaneous
trial specific proposed rulemaking. The procedures for petitions to
institute a covered business method patent review are proposed in
§§42.5, 42.6, 42.8, 42.11, 42.13, 42.20, 42.21, 42.22,
42.24(a)(3), 42.63, 42.65, 42.203, 42.205, and 42.302 through 42.304.
The skills necessary to prepare a petition for review and to
participate in a trial before the Patent Trial and Appeal Board would
be similar to those needed to prepare a request for inter partes
reexamination, to represent a party in an inter partes reexamination,
and to represent a party in an interference proceeding before the
Patent Trial and Appeal Board. The level of skill is typically
possessed by a registered patent practitioner having devoted
professional time to the particular practice area, typically under the
supervision of a practitioner skilled in the particular practice area.
Where authorized by the Board, a non-registered practitioner may be
admitted pro hac vice, on a case-by-case basis based on the facts and
circumstances of the trial and party, as well as the skill of the
practitioner.
The cost of preparing a petition for covered business method patent
review is estimated to be 33.333% higher than the cost of preparing an
inter partes review petition because the petition for covered business
method patent review may seek to institute a proceeding on additional
grounds such as subject matter eligibility. The American Intellectual
Property Law Association's AIPLA Report of the Economic Survey 2011
reported that the average cost of preparing a request for inter partes
reexamination was $46,000. Based on the Office's consideration of the
work required to prepare and file such a request, the Office estimates
that the cost of preparing a petition for covered business method
patent review would be $61,333 (including expert costs).
The filing of a petition for review would also require payment by
the petitioner of the appropriate petition fee to recover the aggregate
cost for providing the review. The appropriate petition fee would be
determined by the number of claims for which review is sought and the
type of review. The proposed fees for filing a petition for covered
business method patent review would be: $35,800 to request review of 20
or fewer claims, $44,750 to request review of 21 to 30 claims, $53,700
to request review of 31 to 40 claims, $71,600 to request review of 41
to 50 claims, $89,500 to request review of 51 to 60 claims, and an
additional $35,800 to request review of additional groups of 10 claims.
In setting fees, the estimated information technology cost to
establish the process and maintain the filing and storage system
through 2017 is to be recovered by charging each petition $2,270. The
remainder of the fee is to recover the cost for judges to determine
whether to institute a review and conduct the review, together with a
proportionate share of indirect costs, e.g., rent, utilities,
additional support, and administrative costs. Based on the direct and
indirect costs, the fully burdened cost per hour for judges to decide a
petition and conduct a review is estimated to be $258.32.
For a petition for covered business method patent review with 20 or
fewer challenged claims, it is anticipated that 121 hours of judge time
would be required. For 21 to 30 challenged claims, an additional 30
hours is anticipated for a total of 151 hours of judge time. For 31 to
40 challenged claims, an additional 60 hours is anticipated for a total
of 181 hours of judge time. For 41 to 50 challenged claims, an
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additional 121 hours is anticipated for a total of 242 hours of judge
time. For 51 to 60 challenged claims, an additional 181 hours is
anticipated for a total of 302 hours of judge time. The increase in
adjustment reflects the added complexity that typically occurs as more
claims are in dispute.
The proposed rules would permit the patent owner to file a
preliminary response to the petition setting forth the reasons why no
review should be initiated. The procedures for a patent owner to file a
preliminary response as an opposition are proposed in §§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.23, 42.24(b), 42.51, 42.52, 42.53, 42.54,
42.63, 42.64, 42.65, 42.107, 42.120, 42.207, and 42.220. The patent
owner is not required to file a preliminary response. The Office
estimates that the preparation and filing of a patent owner preliminary
response would require 100 hours of professional time and cost $34,000
(including expert costs). The AIPLA Report of the Economic Survey 2011
reported that the average cost for inter partes reexamination including
of the request ($46,000), the first patent owner response, and third
party comments was $75,000 (see I-175) and the median billing rate for
professional time of $340 per hour for attorneys in private firms (see
8). Thus, the cost of the first patent owner reply and the third party
statement is $29,000. The Office finds these costs to be reasonable
estimates. The patent owner reply and third party statement, however,
occur after the examiner has made an initial threshold determination and
made only the appropriate rejections. Accordingly, it is anticipated that
filing a patent owner preliminary response to a petition for review would
cost more than the initial reply in a reexamination, or an estimated
$34,000 (including expert costs).
The Office will determine whether to institute a trial within three
months after the earlier of: (1) The submission of a patent owner
preliminary response, (2) the waiver of filing a patent owner
preliminary response, or (3) the expiration of the time period for
filing a patent owner preliminary response. If the Office decides not
to institute a trial, the petitioner may file a request for
reconsideration of the Office's decision. It is anticipated that a
request for reconsideration will require 80 hours of professional time
to prepare and file, for a cost of $27,200. This estimate is based on
the complexity of the issues and desirability to avoid time bars
imposed by 35 U.S.C. 325(b).
Following institution of a trial, the parties may be authorized to
file various motions, e.g., motions to amend and motions for additional
discovery. Where a motion is authorized, an opposition may be
authorized, and where an opposition is authorized, a reply may be
authorized. The procedures for filing a motion are proposed in
§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.22, 42.24(a)(5), 42.51,
42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.221, and 42.223. The
procedures for filing an opposition are proposed in §§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.23, 42.24(b), 42.51, 42.52, 42.53, 42.54,
42.63, 42.64, 42.65, 42.207, and 42.220. The procedures for filing a
reply are proposed in §§ 42.6, 42.8, 42.11, 42.13, 42.21,
42.23, 42.24(c), 42.51, 42.52, 42.53, 42.54, 42.63, and 42.65. As
discussed previously, the Office estimates that the average covered
business method patent review will have 8.89 motions, oppositions, and
replies after institution.
The AIPLA Report of the Economic Survey 2011 reported that the
average cost in contested cases before the trial section of the Board
prior to the priority phase was $322,000 per party. Because of the
overlap of issues in patentability grounds, it is expected that the
cost per motion will decline as more motions are filed in a proceeding.
It is estimated that a motion, opposition, or reply in a derivation
would cost $34,000, which is estimated by dividing the total public
cost for all motions in current contested cases divided by the
estimated number of motions in derivations under 35 U.S.C. 135, as
amended. The cost of a motion, opposition, or reply in a covered
business method patent review is estimated at $44,200 (including expert
costs), reflecting the reduction in overlap between motions relative to
derivation. Based on the work required to file and prepare such briefs,
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the Office considers the reported cost as a reasonable estimate.
After a trial has been instituted but prior to a final written
decision, parties to a covered business method patent review may
request an oral hearing. The procedure for filing requests for oral
argument is proposed in § 42.70. The AIPLA Report of the Economic
Survey 2011 reported that the third quartile cost of an ex parte appeal
with an oral argument is $12,000, while the third quartile cost of an
ex parte appeal without an oral argument is $6,000. In view of the
reported costs, which the Office finds reasonable, and the increased
complexity of an oral hearing with multiple parties, it is estimated
that the cost per party for oral hearings would be $6,800 or $800 more
than the reported third quartile cost for an ex parte oral hearing.
Parties to a covered business method patent review may file
requests to treat a settlement as business confidential, or file a
request for adverse judgment. A written request to make a settlement
agreement available may also be filed. The procedures to file requests
that a settlement be treated as business confidential are proposed in
§ 42.74(b). The procedures to file requests for adverse judgment
are proposed in § 42.73(b). The procedures to file requests to make
a settlement agreement available are proposed in § 42.74(c)(2). It
is anticipated that requests to treat a settlement as business
confidential will require 2 hours of professional time or $680. It is
anticipated that requests for adverse judgment will require 1 hour of
professional time or $340. It is anticipated that requests to make a
settlement agreement available will require 1 hour of professional time
or $340. The requests to make a settlement agreement available will
also require payment of a fee of $400 specified in proposed §42.15(d).
Parties to a review proceeding may seek judicial review of the
judgment of the Board. The procedures to file notices of judicial
review of a Board decision, including notices of appeal and notices of
election provided for in 35 U.S.C. 141, 142, 145, and 146, are proposed
in §§ 90.1 through 90.3. The submission of a copy of a notice
of appeal or a notice of election is anticipated to require 6 minutes
of professional time at a cost of $34.
5. Description of Any Significant Alternatives to the Proposed
Rules Which Accomplish the Stated Objectives of Applicable Statutes and
Which Minimize Any Significant Economic Impact of the Rules on Small
Entities:
Size of petitions and motions: The Office considered whether to
apply a page limit and what an appropriate page limit would be. The
Office does not currently have a page limit on inter partes
reexamination requests. The inter partes reexamination requests from
October 1, 2010 to June 30, 2011, averaged 246 pages. Based on the
experience of processing inter partes reexamination requests, the
Office finds that the very large size of the requests has created a
burden on the Office that hinders the efficiency and timeliness of
processing the requests, and creates a burden on patent owners. The
quarterly reported average processing time from the filing of a request
to the publication of a reexamination certificate ranged from 28.9
months to 41.7 months in fiscal year 2009, from 29.5 months to 37.6
months in fiscal year 2010, and from 31.9 to 38.0 months in fiscal year
2011. See Reexaminations - FY 2011, http://www.uspto.gov/patents/
Reexamination_operational_statistic_through_FY2011Q4.pdf.
By contrast, the Office has a page limit on the motions filed in
contested cases, except where parties are specifically authorized to
exceed the limitation. The typical contested case proceeding is subject
to a standing order that sets a 50 page limit for motions and
oppositions on priority, a 15 page limit for miscellaneous motions
(§ 41.121(a)(3)) and oppositions (§ 41.122), and a 25 page
limit for other motions (§ 41.121(a)(2)) and oppositions to other
motions. In typical proceedings, replies are subject to a 15 page limit
if directed to priority, 5 page limit for miscellaneous issues, and 10
page limit for other motions. The average contested case was terminated
in 10.1 months in fiscal year 2009, in 12 months in fiscal year 2010,
and 9 months in fiscal year 2011. The percentage of contested cases
terminated within 2 years was 93.7% in fiscal year 2009, 88.0% in
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fiscal year 2010, and 94.0% in fiscal year 2011. See BPAI Statistics -
Performance Measures,
http://www.uspto.gov/ip/boards/bpai/stats/perform/index.jsp.
Comparing the average time period for terminating a contested case,
10.0 to 12.0 months, with the average time period, during fiscal years
2009 through 2011, for completing an inter partes reexamination, 28.9
to 41.7 months, indicates that the average interference takes from 24%
(10.0/41.7) to 42% (12.0/28.9) of the time of the average inter partes
reexamination. While several factors contribute to the reduction in time,
limiting the size of the requests and motions is considered a significant
factor. Proposed § 42.24 would provide page limits for petitions, motions,
oppositions, and replies. 35 U.S.C. 326(b) provides considerations that
are to be taken into account when prescribing regulations including the
integrity of the patent system, the efficient administration of the
Office, and the ability to complete timely the trials. The page limits
proposed in these rules are consistent with these considerations.
Federal courts routinely use page limits in managing motions
practice as "[e]ffective writing is concise writing." Spaziano v.
Singletary, 36 F.3d 1028, 1031 n.2 (11th Cir. 1994). Many district
courts restrict the number of pages that may be filed in a motion
including, for example, the District of Delaware, the District of New
Jersey, the Eastern District of Texas, the Northern, Central, and
Southern Districts of California, and the Eastern District of Virginia.
Federal courts have found that page limits ease the burden on both
the parties and the courts, and patent cases are no exception. Eolas
Techs., Inc. v. Adobe Sys., Inc., No. 6:09-CV-446, at 1 (E.D. Tex.
Sept. 2, 2010) ("The Local Rules' page limits ease the burden of
motion practice on both the Court and the parties."); Blackboard, Inc.
v. Desire2Learn, Inc., 521 F. Supp. 2d 575, 576 (E.D. Tex. 2007) (The
parties "seem to share the misconception, popular in some circles,
that motion practice exists to require federal judges to shovel through
steaming mounds of pleonastic arguments in Herculean effort to uncover
a hidden gem of logic that will ineluctably compel a favorable ruling.
Nothing could be farther from the truth."); Broadwater v. Heidtman
Steel Prods., Inc., 182 F. Supp. 2d 705, 710 (S.D. Ill. 2002)
("Counsel are strongly advised, in the future, to not ask this Court
for leave to file any memoranda (supporting or opposing dispositive
motions) longer than 15 pages. The Court has handled complicated patent
cases and employment discrimination cases in which the parties were
able to limit their briefs supporting and opposing summary judgment to
10 or 15 pages." (Emphasis omitted)).
The Board's contested cases experience with page limits in motions
practice is consistent with that of the federal courts. The Board's use
of page limits has shown it to be beneficial without being unduly
restrictive for the parties. Page limits have encouraged the parties to
focus on dispositive issues, easing the burden of motions practice on
the parties and on the Board.
The Board's contested cases experience with page limits is informed
by its use of different approaches over the years. In the early 1990s,
page limits were not routinely used for motions, and the practice
suffered from lengthy and unacceptable delays. To reduce the burden on
the parties and on the Board and thereby reduce the time to decision,
the Board instituted page limits in the late 1990s for every motion.
Page limit practice was found to be effective in reducing the burdens
on the parties and improving decision times at the Board. In 2006, the
Board revised the page limit practice and allowed unlimited findings of
fact and generally limited the number of pages containing argument. Due
to abuses of the system, the Board recently reverted back to page
limits for the entire motion (both argument and findings of fact).
The Board's current page limits are consistent with the 25 page
limits in the Northern, Central, and Southern Districts of California,
and the Middle District of Florida and exceed the limits in the
District of Delaware (20), the Northern District of Illinois (15), the
District of Massachusetts (20), the Eastern District of Michigan (20),
the Southern District of Florida (20), and the Southern District of
Illinois (20).
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In a typical proceeding before the Board, a party may be authorized
to file a single motion for unpatentability based on prior art, a
single motion for unpatentability based upon failure to comply with 35
U.S.C. 112, lack of written description, and/or enablement, and
potentially another motion for lack of compliance with 35 U.S.C. 101,
although a 35 U.S.C. 101 motion may be required to be combined with the
35 U.S.C. 112 motion. Each of these motions is currently limited to 25
pages in length, unless good cause is shown that the page limits are
unduly restrictive for a particular motion.
A petition requesting the institution of a trial proceeding would
be similar to motions currently filed with the Board. Specifically,
petitions to institute a trial seek a final written decision that the
challenged claims are unpatentable, where derivation is a form of
unpatentability. Accordingly, a petition to institute a trial based on
prior art would, under current practice, be limited to 25 pages, and by
consequence, a petition raising unpatentability based on prior art and
unpatentability under 35 U.S.C. 101 and/or 112 would be limited to 50
pages.
Under the proposed rules, a covered business method patent review
petition would be based upon most grounds identified in 35 U.S.C.
321(b), e.g., failure to comply with 35 U.S.C. 101, 102 (based on
certain references), 103, and 112 (except best mode). Under current
practice, a party would be limited to filing two or three motions, each
limited to 25 pages, for a maximum of 75 pages. Where there is more
than one motion for unpatentability based upon different statutory
grounds, the Board's experience is that the motions contain similar
discussions of technology and claim constructions. Such overlap is
unnecessary where a single petition for unpatentability is filed. Thus,
the proposed 70 page limit is considered sufficient in all but
exceptional cases.
The proposed rule would provide that petitions to institute a trial
must comply with the stated page limits, but may be accompanied by a
motion that seeks to waive the page limits. The petitioner must show in
the motion how a waiver of the page limits is in the interests of
justice. A copy of the desired non-page limited petition must accompany
the motion. Generally, the Board would decide the motion prior to
deciding whether to institute the trial.
Current Board practice provides a limit of 25 pages for other
motions and 15 pages for miscellaneous motions. The Board's experience
is that such page limits are sufficient for the parties filing them and
do not unduly burden the opposing party or the Board. Petitions to
institute a trial would generally replace the current practice of
filing motions for unpatentability, as most motions for relief are
expected to be similar to the current interference miscellaneous motion
practice. Accordingly, the proposed 15 page limit is considered
sufficient for most motions but may be adjusted where the limit is
determined to be unduly restrictive for the relief requested.
Proposed § 42.24(b) would provide page limits for oppositions
filed in response to motions. Current contested cases practice provides
an equal number of pages for an opposition as its corresponding motion.
This is generally consistent with motions practice in federal courts.
The proposed rule would continue the current practice.
Proposed § 42.24(c) would provide page limits for replies.
Current contested cases practice provides a 15 page limit for priority
motion replies, a 5 page limit for miscellaneous (procedural) motion
replies, and a 10 page limit for all other motions. The proposed rule
is consistent with current contested case practice for procedural
motions. The proposed rule would provide a 15 page limit for reply to
petitions requesting a trial, which the Office believes is sufficient
based on current practice. Current contested cases practice has shown
that such page limits do not unduly restrict the parties and, in fact,
have provided sufficient flexibility to parties to not only reply to
the motion but also help to focus on the issues. Thus, it is
anticipated that default page limits would minimize the economic impact
on small entities by focusing on the issues in the trials.
The Leahy-Smith America Invents Act requires that the Director, in
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prescribing rules for covered business method patent reviews, consider
the effect of the rules on the economy, the integrity of the patent
system, the efficient administration of the Office, and the ability of
the Office to complete timely the instituted proceedings. See 35 U.S.C.
326(b). In view of the actual results of the duration of proceedings in
inter partes reexamination (without page limits) and contested cases
(with page limits), proposing procedures with reasonable page limits
would be consistent with the objectives set forth in the Leahy-Smith
America Invents Act. Based on our experience on the time needed to
complete a non-page limited proceeding, the option of non-page limited
proceedings was not adopted.
Fee Setting: 35 U.S.C. 321(a) requires the Director to establish
fees to be paid by the person requesting the review in such amounts as
the Director determines to be reasonable, considering the aggregate
costs of the review. In contrast to current 35 U.S.C. 311(b) and
312(c), the Leahy-Smith America Invents Act requires the Director to
establish more than one fee for reviews based on the total cost of
performing the reviews, and does not provide for refund of any part of
the fee when the Director determine that the review should not be
initiated.
35 U.S.C. 322(a)(1) further requires that the fee established by
the Director under 35 U.S.C. 321 accompany the petition on filing.
Accordingly, in interpreting the fee setting authority in 35 U.S.C.
321(a), it is reasonable that the Director should set a number of fees
for filing a petition based on the anticipated aggregate cost of
conducting the review depending on the complexity of the review, and
require payment of the fee upon filing of the petition.
Based on experience with contested cases and inter partes
reexamination proceedings, the following characteristics of requests
were considered as potential factors for fee setting as each would
likely impact the cost of providing the new services. The Office also
considered the relative difficulty in administrating each option in
selecting the characteristics for which different fees should be paid
for requesting review.
I. Adopted Option. Number of claims for which review is requested.
The number of claims often impacts the complexity of the request and
increases the demands placed on the deciding officials. Cf. In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1309 (Fed.
Cir. 2011) (limiting number of asserted claims is appropriate to
efficiently manage a case). Moreover, the number of claims for which
review is requested can be easily determined and administered, which
avoids delays in the Office and the impact on the economy or patent
system that would occur if an otherwise meritorious request is refused
due to improper fee payment. Any subsequent petition would be time
barred in view 35 U.S.C. 325.
II. Alternative Option I. Number of grounds for which review is
requested. The Office has experience with large numbers of cumulative
grounds being presented in inter partes reexaminations which often add
little value to the proceedings. Allowing for a large number of grounds
to be presented on payment of an additional fee(s) is not favored.
Determination of the number of grounds in a request may be contentious
and difficult and may result in a large amount of high-level petition
work. As such, the option would have a negative impact on small
entities. Moreover, interferences instituted in the 1980s and early
1990s suffered from this problem as there was no page limit for motions
and the parties had little incentive to focus on the issues for
decision. The resulting interference records were often a collection of
disparate issues and evidence. This led to lengthy and unwarranted
delays in deciding interference cases as well as increased costs for
parties and the Office. Accordingly, this alternative is inconsistent
with objectives of the Leahy-Smith America Invents Act that the
Director, in prescribing rules for the covered business method patent
reviews, consider the effect of the rules on the economy, the integrity
of the patent system, the efficient administration of the Office, and
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the ability of the Office to timely complete the instituted
proceedings.
III. Alternative Option II. Pages of argument. The Office has
experience with large requests in inter partes reexamination in which
the merits of the proceedings could have been resolved in a shorter
request. Allowing for unnecessarily large requests on payment of an
additional fee(s) is not favored. Moreover, determination of what
should be counted as "argument" as compared with "evidence" has
often proven to be contentious and difficult as administered in the
current inter partes reexamination appeal process.
In addition, the trial section of the Board recently experimented
with motions having a fixed page limit for the argument section and an
unlimited number of pages for the statement of facts. Unlimited pages
for the statement of facts led to a dramatic increase in the number of
alleged facts and pages associated with those facts. For example, one
party used approximately 10 pages for a single "fact" that merely cut
and pasted a portion of a declarant's cross-examination. Based upon the
trial section's experience with unlimited pages of facts, the Board
recently reverted back to a fixed page limit for the entire motion
(argument and facts). Accordingly, this alternative is inconsistent
with objectives of the Leahy-Smith America Invents Act that the
Director, in prescribing rules for the covered business method patent
reviews, consider the effect of the rules on the economy, the integrity
of the patent system, the efficient administration of the Office, and
the ability of the Office to complete timely the instituted
proceedings.
IV. Alternative Option III. The Office considered an alternative
fee setting regime in which fees would be charged at various steps in
the review process, a first fee on filing of the petition, a second fee
if instituted, a third fee on filing a motion in opposition to amended
claims, etc. The alternative fee setting regime would hamper the
ability of the Office to complete timely reviews, would result in
dismissal of pending proceedings with patentability in doubt due to
non-payment of required fees by third parties, and would be
inconsistent with 35 U.S.C. 322 that requires the fee established by
the Director be paid at the time of filing the petition. Accordingly,
this alternative is inconsistent with objectives of the Leahy-Smith
America Invents Act that the Director, in prescribing rules for covered
business method patent reviews, consider the effect of the rules on the
economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to complete
timely the instituted proceedings.
V. Alternative Option IV. The Office considered setting reduced
fees for small and micro entities and to provide refunds if a review is
not instituted. The Office may set the fee to recover the cost
of providing the services under 35 U.S.C. 41(d)(2)(a). Fees set under
this authority are not reduced for small entities, see 35 U.S.C.
42(h)(1), as amended. Moreover, the Office does not have authority to
refund fees that were not paid by mistake or in excess of that owed.
See 35 U.S.C. 42(d).
Discovery: The Office considered a procedure for discovery similar
to the one available during district court litigation. Discovery of
that scope has been criticized sharply, particularly when attorneys use
discovery tools as tactical weapons, which hinder the "just, speedy,
and inexpensive determination of every action and proceedings." See
Introduction to An E-Discovery Model Order available at
http://www.cafc.uscourts.gov/images/stories/announcements/Ediscovery_
Model_Order.pdf. Accordingly, this alternative would have been incon-
sistent with objectives of the Leahy-Smith America Invents Act that the
Director, in prescribing rules for the covered business method patent
reviews, consider the effect of the rules on the economy, the integrity
of the patent system, the efficient administration of the Office, and
the ability of the Office to complete timely the instituted proceedings.
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Additional discovery increases trial costs and increases the
expenditures of time by the parties and the Board. To promote effective
discovery, the proposed rule would require a showing of good cause to
authorize additional requested discovery. To show good cause, a party
must make a particular and specific demonstration of fact. The moving
party must also show that it was fully diligent in seeking discovery,
and that there is no undue prejudice to the non-moving party.
The Office has proposed a default scheduling order to provide
limited discovery as a matter of right and also the ability to seek
additional discovery on a case-by-case basis. In weighing the need for
additional discovery, should a request be made, the economic impact on
the opposing party would be considered which would tend to limit
additional discovery where a party is a small entity.
Pro Hac Vice: The Office considered whether to allow counsel to
appear pro hac vice. In certain cases, highly skilled, but non-
registered, attorneys have appeared satisfactorily before the Board in
contested cases. The Board may recognize counsel pro hac vice during a
proceeding upon a showing of good cause. Proceedings before the Office
can be technically complex. Consequently, the grant of a motion to
appear pro hac vice is a discretionary action taking into account the
specifics of the proceedings. Similarly, the revocation of pro hac vice
is a discretionary action taking into account various factors,
including incompetence, unwillingness to abide by the Office's Rules of
Professional Conduct, prior findings of misconduct before the Office in
other proceedings, and incivility.
The Board's past practice has required the filing of a motion by a
registered patent practitioner seeking pro hac vice representation
based upon a showing of: (1) How qualified the unregistered
practitioner is to represent the party in the proceeding when measured
against a registered practitioner, and, (2) whether the party has a
genuine need to have the particular unregistered practitioner represent
it during the proceeding. This practice has proven effective in the
limited number of contested cases where such requests have been
granted. The proposed rule, if adopted, would allow for this practice
in the new proceedings authorized by the Leahy-Smith America Invents
Act.
The proposed rules would provide a limited delegation to the Board
under 35 U.S.C. 2(b)(2) and 32 to regulate the conduct of counsel in
Board proceedings. The proposed rule would delegate to the Board the
authority to conduct counsel disqualification proceedings while the
Board has jurisdiction over a proceeding. The rule would also delegate
to the Chief Administrative Patent Judge the authority to make final a
decision to disqualify counsel in a proceeding before the Board for the
purposes of judicial review. This delegation would not derogate from
the Director the prerogative to make such decisions, nor would it
prevent the Chief Administrative Patent Judge from further delegating
authority to an administrative patent judge.
The Office considered broadly permitting practitioners not
registered to practice by the Office to represent parties in trial as
well as categorically prohibiting such practice. A prohibition on the
practice would be inconsistent with the Board's experience, and more
importantly, might result in increased costs particularly where a small
entity has selected its district court litigation team for
representation before the Board and has a patent review filed after
litigation efforts have commenced. Alternatively, broadly making the
practice available would create burdens on the Office in administering
the trials and in completing the trial within the established time
frame, particularly if the selected practitioner does not have the
requisite skill. In weighing the desirability of admitting a
practitioner pro hac vice, the economic impact on the party in interest
would be considered which would tend to increase the likelihood that a
small entity could be represented by a non-registered practitioner.
Accordingly, the alternatives to eliminate pro hac vice practice or to
permit it more broadly would have been inconsistent with objectives of
the Leahy-Smith America Invents Act that the Director, in prescribing
rules for the covered business method patent reviews, consider the
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effect of the rules on the economy, the integrity of the patent system,
the efficient administration of the Office, and the ability of the
Office to complete timely the instituted proceedings.
Threshold for Instituting a Review: The Office considered whether
the threshold for instituting a review could be set as low as or lower
than the threshold for ex parte reexamination. This alternative could
not be adopted in view of the statutory requirements in 35 U.S.C. 324.
Default Electronic Filing: The Office considered a paper filing
system and a mandatory electronic filing system (without any
exceptions) as alternatives to the proposed requirement that all papers
are to be electronically filed, unless otherwise authorized.
Based on the Office's experience, a paper based filing system
increases delay in processing papers, delay in public availability, and
the chance that a paper may be misplaced or made available to an
improper party if confidential. Accordingly, the alternative of a paper
based filing system would have been inconsistent with objectives of the
Leahy-Smith America Invent Act that the Director, in prescribing rules
for the covered business method patent reviews, consider the effect of
the rules on the economy, the integrity of the patent system, the
efficient administration of the Office, and the ability of the Office
to complete timely the instituted proceedings.
An electronic filing system (without any exceptions) that is
rigidly applied would result in unnecessary cost and burdens,
particularly where a party lacks the ability to file electronically. By
contrast, if the proposed option is adopted, it is expected that the
entity size and sophistication would be considered in determining
whether alternative filing methods would be authorized.
6. Identification, to the Extent Practicable, of All Relevant
Federal Rules Which May Duplicate, Overlap, or Conflict With the
Proposed Rules:
37 CFR 1.99 provides for the submission of information after
publication of a patent application during examination by third
parties.
37 CFR 1.171-1.179 provide for applications to reissue a patent to
correct errors, including where a claim in a patent is overly broad.
37 CFR 1.291 provides for the protest against the issuance of a
patent during examination.
37 CFR 1.321 provides for the disclaimer of a claim by a patentee.
37 CFR 1.501 and 1.502 provide for ex parte reexamination of
patents. Under these rules, a person may submit to the Office prior art
consisting of patents or printed publications that are pertinent to the
patentability of any claim of a patent, and request reexamination of
any claim in the patent on the basis of the cited prior art patents or
printed publications. Consistent with 35 U.S.C. 302-307, ex parte
reexamination rules provide a different threshold for initiation,
require the proceeding to be conducted by an examiner with a right of
appeal to the Patent Trial and Appeal Board, and allow for limited
participation by third parties.
37 CFR 1.902-1.997 provide for inter partes reexamination of
patents. Similar to ex parte reexamination, inter partes reexamination
provides a procedure in which a third party may request reexamination
of any claim in a patent on the basis of the cited prior art patents
and printed publication. The inter partes reexamination practice will
be eliminated, except for requests filed before the effective date,
September 16, 2012. See § 6(c)(3)(C) of the Leahy-Smith America
Invents Act.
Other countries have their own patent laws, and an entity desiring
a patent in a particular country must make an application for patent in
that country, in accordance with the applicable law. Although the
potential for overlap exists internationally, this cannot be avoided
except by treaty (such as the Paris Convention for the Protection of
Industrial Property, or the Patent Cooperation Treaty (PCT)).
Nevertheless, the Office believes that there are no other duplicative
or overlapping foreign rules.
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C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be significant for purposes of
Executive Order 12866 (Sept. 30, 1993), as amended by Executive Order
13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007).
Based on the petition and other filing requirements for initiating
a review proceeding, the USPTO initially estimates the burden of the
proposed rules on the public to be $22,761,410 in fiscal year 2013,
which represents the sum of the estimated total annual (hour)
respondent cost burden ($20,405,610) plus the estimated total annual
non-hour respondent cost burden ($2,355,800) provided in Part O,
Section II, of this notice, infra.
The USPTO expect several benefits to flow from the Leahy-Smith
America Invents Act and these proposed rules. It is anticipated that
the proposed rules will reduce the time for reviewing patents at the
USPTO. Specifically, 35 U.S.C. 326(a) provides that the Director
prescribe regulations requiring a final determination by the Board
within one year of initiation, which may be extended for up to six
months for good cause. In contrast, currently for inter partes
reexamination, the average time from the filing to the publication of a
certificate ranged from 28.9 to 41.7 months during fiscal years 2009-
2011. See Reexaminations - FY 2011, http://www.uspto.gov/patents/
Reexamination_operational_statistic_through_FY2011Q4.pdf.
Likewise, it is anticipated that the proposed rules will minimize
duplication of efforts. In particular, the Leahy-Smith America Invents
Act provides more coordination between district court infringement
litigation and covered business method patent review to reduce
duplication of efforts and costs.
The AIPLA Report of the Economic Survey 2011 reports that the total
cost of patent litigation where the damages at risk are less than
$1,000,000 average $916,000, where the damages at risk are between
$1,000,000 and $25,000,000 average $2,769,000, and where the damages at
risk exceed $25,000,000 average $6,018,000. There may be a significant
reduction in overall burden if, as intended, the Leahy-Smith America
Invents Act and the proposed rules reduce the overlap between review at
the USPTO of issued patents and validity determination during patent
infringement actions. Data from the United States district courts
reveals that 2,830 patent cases were filed in 2006, 2,896 in 2007,
2,909 in 2008, 2,792 in 2009, and 3,301 in 2010. See U.S. Courts,
Judicial Business of the United States Courts, www.uscourts.gov/uscourts/
Statistics/JudicialBusiness/2010/appendices/C02ASep10.pdf
(last visited Nov. 11, 2011) (hosting annual reports for 1997 through
2010). Thus, the Office estimates that no more than 3,300 patent cases
(the highest number of yearly filings between 2006 and 2010 rounded to
the nearest 100) are likely to be filed annually. The aggregate burden
estimate above ($22,761,410) was not offset by a reduction in burden
based on improved coordination between district court patent litigation
and the new inter partes review proceedings.
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on
society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector, and the public as a whole,
and provided online access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
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E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996). This rulemaking
carries out a statute designed to lessen litigation. See H.R. Rep. No.
112-98, at 45-48.
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not effect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801-808), prior to issuing any final rule, the United
States Patent and Trademark Office will submit a report containing the
final rule and other required information to the U.S. Senate, the U.S.
House of Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this notice are not expected to
result in an annual effect on the economy of 100 million dollars or
more, a major increase in costs or prices, or significant adverse
effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign based enterprises in domestic and export markets.
Therefore, this notice is not expected to result in a "major rule" as
defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes proposed in
this notice do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501-1571.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321-4370h.
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N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501-3549) requires that the USPTO consider the impact of
paperwork and other information collection burdens imposed on the
public. This proposed rulemaking involves information collection
requirements which are subject to review by the Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C.
3501-3549). The collection of information involved in this notice has
been submitted to OMB under OMB control number 0651-00xx. In the Notice
"Rules of Practice for Trials before the Patent Trial and Appeal Board
and Judicial Review of Patent Trial and Appeal Board Decisions," RIN
0651-AC70, the information collection for all of the new trials
authorized by the Leahy-Smith America Invents Act were provided. In the
Notice "Changes to Implement Post-Grant Review Proceedings," RIN
0651-AC72, the information collection for post-grant review and covered
business method patent review combined authorized by the Leahy-Smith
America Invents Act were provided. This notice also provides the subset
of burden created by the covered business method patent review
provisions. The proposed collection will be available at the OMB's
Information Collection Review Web site (www.reginfo.gov/public/do/PRAMain).
The USPTO is submitting the information collection to OMB for its
review and approval because this notice of proposed rulemaking will add
the following to a collection of information:
(1) Petitions to institute a covered business method patent review
(§§ 42.5, 42.6, 42.8, 42.11, 42.13, 42.20, 42.21, 42.22,
42.24(a)(3), 42.63, 42.65, 42.203, 42.205, and 42.302 through 42.304);
(2) motions (§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.22,
42.24(a)(5), 42.51 through 42.54, 42.63, 42.64, 42.65, 42.221, 42.123,
and 42.223);
(3) oppositions (§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.23,
42.24(b), 42.51, 42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.207, and
42.220);
(4) replies provided for in 35 U.S.C. 321-329 (§§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.23, 42.24(c), 42.51, 42.52, 42.53, 42.54,
42.63, and 42.65).
The proposed rules also permit filing requests for oral argument
(§ 42.70) provided for in 35 U.S.C. 326(a)(10), requests for
rehearing (§ 42.71(c)), requests for adverse judgment (§ 42.73(b)),
and requests that a settlement be treated as business
confidential (§ 42.74(b)) provided for in 35 U.S.C. 327.
I. Abstract: The USPTO is required by 35 U.S.C. 131 and 151 to
examine applications and, when appropriate, issue applications as
patents.
Chapter 32 of title 35 U.S.C. in effect on September 16, 2012,
provides for post-grant review proceedings allowing third parties to
petition the USPTO to review the patentability of an issued patent
under any ground authorized under 35 U.S.C. 282(b)(2). If a trial is
initiated by the USPTO based on the petition, as authorized by the
USPTO, additional motions may be filed by the petitioner. A patent
owner may file a response to the petition and if a trial is instituted,
as authorized by the USPTO, may file additional motions.
Section 18 of the Leahy-Smith America Invents Act provides for a
transitional program for covered business method patents which will
employ the standards and procedures of the post-grant review proceeding
with a few exceptions.
In estimating the number of hours necessary for preparing a
petition to institute a covered business method patent review, the
USPTO considered the estimated cost of preparing a request for inter
partes reexamination ($46,000), the median billing rate ($340/hour),
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and the observation that the cost of inter partes reexamination has
risen the fastest of all litigation costs since 2009 in the AIPLA
Report of the Economic Survey 2011. Since additional grounds are
provided in covered business method patent review, the Office estimates
the cost of preparing a petition to institute a review will be 33.333%
more than the estimated cost of preparing a request for inter partes
reexamination, or $61,333.
In estimating the number of hours necessary for preparing motions
after instituting and participating in the review, the USPTO considered
the AIPLA Report of the Economic Survey 2011 which reported the average
cost of a party to a two-party interference to the end of the
preliminary motion phase ($322,000) and inclusive of all costs
($631,000). The Office considered that the preliminary motion phase is
a good proxy for patentability reviews since that is the period of
current contested cases before the trial section of the Board where
most patentability motions are currently filed.
The USPTO also reviewed recent contested cases before the trial
section of the Board to make estimates on the average number of motions
for any matter including priority, the subset of those motions directed
to non-priority issues, the subset of those motions
directed to non-priority patentability issues, and the subset of those
motions directed to patentability issues based on a patent or printed
publication on the basis of 35 U.S.C. 102 or 103. The review of current
contested cases before the trial section of the Board indicated that
approximately 15% of motions were directed to prior art grounds, 18% of
motions were directed to other patentability grounds, 27% were directed
to miscellaneous issues, and 40% were directed to priority issues. It
was estimated that the cost per motion to a party in current contested
cases before the trial section of the Board declines because of overlap
in subject matter, expert overlap, and familiarity with the technical
subject matter. Given the overlap of subject matter, a proceeding with
fewer motions will have a somewhat less than proportional decrease in
costs since the overlapping costs will be spread over fewer motions.
It is estimated that the cost of an inter partes review would be
60% of the cost of current contested cases before the trial section of
the Board to the end of the preliminary motion period. An inter partes
review should have many fewer motions since only one party will have a
patent that is the subject of the proceeding (compared with each party
having at least a patent or an application in current contested cases
before the trial section of the Board). Moreover, fewer issues can be
raised since inter partes review will not have priority-related issues
that must be addressed in current contested cases before the trial
section of the Board. Consequently, a 60% weighting factor should
capture the typical costs of an inter partes review.
It is estimated that the cost of a covered business method patent
review would be 75% of the cost of current contested cases before the
trial section of the Board to the end of the preliminary motion period.
A covered business method patent review should have many fewer motions
since only one party will have a patent that is the subject of the
proceeding (compared with each party having at least a patent or an
application in current contested cases before the trial section of the
Board). Moreover, fewer issues can be raised since covered business
method patent reviews will not have the priority-related issues that
must be addressed in current contested cases before the trial section
of the Board before the priority phase. Again, a 75% weighting factor
should capture the typical costs of a covered business method patent
review.
The title, description, and respondent description of the
information collection are shown below with an estimate of the annual
reporting burdens for the covered business method patent review
provisions. Included in this estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information. The principal impact of
the proposed changes in this notice of proposed rulemaking is to
implement the changes to Office practice necessitated by §§ 6(d) and 18
of the Leahy-Smith America Invents Act.
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The public uses this information collection to request review and
derivation proceedings and to ensure that the associated fees and
documentation are submitted to the USPTO.
II. Data
Needs and Uses: The information supplied to the USPTO by a petition
to institute a review as well as the motions authorized following the
institution is used by the USPTO to determine whether to initiate a
review under 35 U.S.C. 324 and to prepare a final decision under 35
U.S.C. 328.
OMB Number: 0651-00xx.
Title: Patent Review and Derivation Proceedings.
Form Numbers: None.
Type of Review: New Collection.
Likely Respondents/Affected Public: Individuals or households,
businesses or other for profit, not-for-profit institutions, farms,
Federal Government, and state, local, or tribal governments.
Estimated Number of Respondents/Frequency of Collection: 100
respondents and 515 responses per year.
Estimated Time per Response: The USPTO estimates that it will take
the public from 0.1 to 180.4 hours to gather the necessary information,
prepare the documents, and submit the information to the USPTO.
Estimated Total Annual Respondent Burden Hours: 60,016.5 hours per
year.
Estimated Total Annual (Hour) Respondent Cost Burden: $20,405,610
per year. The USPTO expects that the information in this collection
will be prepared by attorneys. Using the professional rate of $340 per
hour for attorneys in private firms, the USPTO estimates that the
respondent cost burden for this collection will be approximately
$20,405,610 per year (60,016.5 hours per year multiplied by $340 per
hour).
Estimated Total Annual Non-hour Respondent Cost Burden: $2,355,800
per year. There are no capital start-up or maintenance costs associated
with this information collection. However, this collection does have
annual (non-hour) costs in the form of filing fees. There are filing
fees associated with petitions for covered business method patent
review and for requests to treat a settlement as business confidential.
The total fees for this collection are calculated in the accompanying
table. The USPTO estimates that the total fees associated with this
collection will be approximately $2,355,800 per year.
Therefore, the total estimated cost burden in fiscal year 2013 is
estimated to be $22,761,410 (the sum of the estimated total annual
(hour) respondent cost burden ($20,405,610) plus the estimated total
annual non-hour respondent cost burden ($2,355,800)).
Estimated time Estimated Estimated
or response annual annual burden
Item hours responses hours
Petition for covered business 180.4 50 9,020
method patent review
Reply to initial covered 100 45 4,500
business method patent
review
Request for Reconsideration 80 14 1,120
Motions, replies and 130 342 44,460
oppositions after
institution in
covered business method
patent review
Request for oral hearing 20 45 900
Request to treat a settlement
as business confidential 2 2 4
Request for adverse judgment,
default adverse judgment 1 10 10
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or settlement
Request to make a settlement
agreement available 1 2 2
Notice of judicial review of
a Board decision (e.g., 0.1 5 0.5
notice of appeal under
35 U.S.C. 142)
Totals 515 60,016.5
Estimated Estimated
annual annual filing
Item responses Fee amount costs
Petition for covered business 50 $47,100 $2,355,000
method patent review
Reply to covered business 45 0 0
method patent review
petition
Request for Reconsideration 14 0 0
Motions, replies and
oppositions after
initiation in covered 342 0 0
business method patent
review
Request for oral hearing 45 0 0
Request to treat a settlement 2 0 0
as business confidential
Request for adverse judgment, 10 0 0
default adverse judgment
or settlement
Request to make a settlement 2 400 800
agreement available
Notice of judicial review of 5 0 0
a Board decision (e.g.,
notice of appeal under
35 U.S.C. 142)
Totals 515 2,355,800
III. Solicitation
The agency is soliciting comments to: (1) Evaluate whether the
proposed information requirement is necessary for the proper
performance of the functions of the agency, including whether the
information will have practical utility; (2) evaluate the accuracy of
the agency's estimate of the burden; (3) enhance the quality, utility,
and clarity of the information to be collected; and (4) minimize the
burden of collecting the information on those who are to respond,
including by using appropriate automated, electronic, mechanical, or
other technological collection techniques or other forms of information
technology.
Interested persons are requested to send comments regarding this
information collection by April 10, 2012, to: (1) The Office of
Information and Regulatory Affairs, Office of Management and Budget,
New Executive Office Building, Room 10202, 725 17th Street NW.,
Washington, DC 20503, Attention: Nicholas A. Fraser, Desk Officer for
the United States Patent and Trademark Office, and via email at
nfraser@omb.eop.gov; and (2) The Board of Patent Appeals and
Interferences by electronic mail message over the Internet addressed
to: TPCBMP_Rules@uspto.gov, or by mail addressed to: Mail Stop Patent
Board, Director of the United States Patent and Trademark Office, P.O.
Box 1450, Alexandria, VA 22313-1450, marked to the attention of "Lead
Judge Michael Tierney, Covered Business Method Patent Review Proposed
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Rules."
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 42
Administrative practice and procedure, Inventions and patents,
Lawyers.
Proposed Amendments to the Regulatory Text
For the reasons stated in the preamble, the Under Secretary of
Commerce for Intellectual Property and Director of the United States
Patent and Trademark Office propose to amend 37 CFR part 42 as proposed
to be added in the February 9, 2012, issue of the Federal Register as
follows:
PART 42 - TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
1. The authority citation for 37 CFR part 42 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312,
316, 321-326 and Leahy-Smith America Invents Act, Pub. L. 112-29,
sections 6(c), 6(f), and 18, 125 Stat. 284, 304, 311, and 329
(2011).
2. A new subpart D is added to read as follows:
Subpart D - Transitional Program for Covered Business Method Patents
§
42.300 Procedure; pendency.
42.301 Definitions.
42.302 Who may petition for a covered business method patent review.
42.303 Time for filing.
42.304 Content of petition.
§ 42.300 Procedure; pendency.
(a) A covered business method patent review is a trial subject to
the procedures set forth in subpart A of this part and is also subject
to the post-grant review procedures set forth in subpart C except for
§§ 42.200, 42.201, 42.202, and 42.204.
(b) A claim in an unexpired patent shall be given its broadest
reasonable construction in light of the specification of the patent in
which it appears.
(c) A covered business method patent review proceeding shall be
administered such that pendency before the Board after institution is
normally no more than one year. The time can be extended by up to six
months by the Chief Administrative Patent Judge for good cause.
(d) The rules in this subpart are effective until September 15,
2020, except that the rules shall continue to apply to any petition for
a covered business method patent review filed before the date of
repeal.
§ 42.301 Definitions.
In addition to the definitions in § 42.2, the following
definitions apply to proceedings under this subpart:
(a) Covered business method patent means a patent that claims a
method or corresponding apparatus for performing data processing or
other operations used in the practice, administration, or management of
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a financial product or service, except that the term does not include
patents for technological inventions.
(b) [Reserved].
§ 42.302 Who may petition for a covered business method patent
review.
(a) A petitioner may not file with the Office a petition to
institute a covered business method patent review of the patent unless
the petitioner, the petitioner's real party in interest, or a privy of
the petitioner has been sued for infringement of the patent or has been
charged with infringement under that patent.
(b) A petitioner may not file a petition to institute a covered
business method patent review of the patent where the petitioner, the
petitioner's real party in interest, or a privy of the petitioner is
estopped from challenging the claims on the grounds identified in the
petition.
§ 42.303 Time for filing.
A petition requesting a covered business method patent review may
be filed any time except during the period in which a petition for a
post-grant review of the patent would satisfy the requirements of 35
U.S.C. 321(c).
§ 42.304 Content of petition.
In addition to any other notices required by subparts A and C of
this part, a petition must request judgment against one or more claims
of a patent identified by patent number. In addition to the
requirements of § 42.22, the petition must set forth:
(a) Grounds for standing. The petitioner must demonstrate that the
patent for which review is sought is a covered business method patent,
and that the petitioner meets the eligibility requirements of § 42.302.
(b) Identification of challenge. Provide a statement of the precise
relief requested for each claim challenged. The statement must identify
the following:
(1) The claim;
(2) The specific statutory grounds permitted under paragraph (2) or
(3) of 35 U.S.C. 282(b) on which the challenge to the claim is based;
(3) How the challenged claim is to be construed. Where the claim to
be construed contains a means-plus-function or step-plus-function
limitation as permitted under 35 U.S.C. 112, paragraph 6, the
construction of the claim must identify the specific portions of the
specification that describe the structure, material, or acts
corresponding to each claimed function;
(4) How the construed claim is unpatentable under the statutory
grounds identified in paragraph (b)(2) of this section. Where the
grounds for unpatentability are based on prior art, the petition must
specify where each element of the claim is found in the prior art. For
all other grounds of unpatentability, the petition must identify the
specific part of the claim that fails to comply with the statutory
grounds raised and state how the identified subject matter fails to
comply with the statute; and
(5) The exhibit number of supporting evidence relied upon to
support the challenge and state the relevance of the evidence to the
challenge raised including identifying specific portions of the
evidence that support the challenge. The Board may exclude or give no
weight to evidence where a party has failed to state its relevance or
to identify specific portions of the evidence that support the
challenge.
(c) A motion may be filed that seeks to correct a mistake in the
petition where the mistake is of a clerical or typographical nature.
The grant of such a motion does not change the filing date of the
petition.
January 31, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
| Transitional Program for Covered Business Method Patents - Definition of Technological Invention |
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 42
[Docket No. PTO-P-2011-0087]
RIN 0651-AC75
Transitional Program for Covered Business Method Patents -
Definition of Technological Invention
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office or
USPTO) proposes a new rule to implement the provision of the Leahy-
Smith America Invents Act that requires the Office to issue regulations
for determining whether a patent is for a technological invention in a
transitional post-grant review proceeding for covered business method
patents. The provision of the Leahy-Smith America Invents Act will take
effect on September 16, 2012, one year after the date of enactment. The
provision and any regulations issued under the provision will be
repealed on September 16, 2020, with respect to any new petitions under
the transitional program.
DATES: The Office solicits comments from the public on this proposed
rulemaking. Written comments must be received on or before April 10,
2012 to ensure consideration.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: TPCBMP_Definition@uspto.gov. Comments may also
be submitted by postal mail addressed to: Mail Stop Patent Board,
Director of the United States Patent and Trademark Office, P.O. Box
1450, Alexandria, VA 22313-1450, marked to the attention of "Lead
Judge Michael Tierney, Covered Business Method Patent Review Proposed
Definition for Technological Invention."
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov/) for additional
instructions on providing comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments are preferred to be submitted in
plain text, but also may be submitted in ADOBE® portable
document format or MICROSOFT WORD® format. Comments not
submitted electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE® portable
document format.
The comments will be available for public inspection at the Board
of Patent Appeals and Interferences, currently located in Madison East,
Ninth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also
will be available for viewing via the Office's Internet Web site
(http://www.uspto.gov/). Because comments will be made available for
public inspection, information that the submitter does not desire to
make public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Sally Medley, Administrative Patent
Judge, Robert Clarke, Administrative Patent Judge, Michael Tierney,
Lead Administrative Patent Judge, and Joni Chang, Administrative Patent
Judge, Board of Patent Appeals and Interferences, by telephone at (571)
272-9797.
SUPPLEMENTARY INFORMATION: On September 16, 2011, the Leahy-Smith
America Invents Act was enacted into law (Pub. L. 112-29, 125 Stat. 284
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(2011)). The purpose of the Leahy-Smith America Invents Act and the
proposed regulations is to establish a more efficient and streamlined
patent system that will improve patent quality and limit unnecessary
and counterproductive litigation costs. The preamble of this notice sets
forth in detail the definition of technological invention that the Board
will use in conducting transitional covered business method patent review
proceedings. The USPTO is engaged in a transparent process to create a
timely, cost-effective alternative to litigation. Moreover, the rulemaking
process is designed to ensure the integrity of the trial procedures.
See 35 U.S.C. 326(b). The proposed rules would provide a definition of
technological invention that the Board will use in conducting
transitional covered business method review proceedings.
Section 18 of the Leahy-Smith America Invents Act provides that the
Director may institute a transitional proceeding only for a patent that
is a covered business method patent. Section 18(d)(1) of the Leahy-
Smith America Invents Act specifies that a covered business method
patent is a patent that claims a method or corresponding apparatus for
performing data processing or other operations used in the practice,
administration, or management of a financial product or service, except
that the term does not include patents for technological inventions.
Section 18(d)(2) provides that the Director will issue regulations for
determining whether a patent is for a technological invention. This
rulemaking provides regulations for determining whether a patent is for
a technological invention. The Leahy-Smith America Invents Act provides
that the transitional program for the review of covered business method
patents will take effect on September 16, 2012, one year after the date
of enactment, and applies to any covered business method patent issued
before, on, or after September 16, 2012. Section 18 of the Leahy-Smith
America Invents Act and the regulations issued under Sec. 18 will be
repealed on September 16, 2020. Section 18 and the regulations issued
will continue to apply after September 16, 2020, to any petition for a
transitional proceeding that is filed before September 16, 2020.
Discussion of Specific Rules
This notice proposes a new rule to implement the provisions of
Section 18(d)(2) of the Leahy-Smith America Invents Act that provides
that the Director will issue regulations for determining whether a
patent is for a technological invention. A separate notice proposes new
rules to implement the provisions of the Leahy-Smith America Invents
Act for the transitional program for covered business method patents
(RIN 0651-AC73). The separate notice proposes to add a new subpart D to
37 CFR part 42 to provide rules specific to transitional post-grant
review of covered business method patents, including the definition for
covered business method patent in proposed § 42.301(a).
Additionally, the Office in a separate rulemaking is proposing to
add part 42, including subpart A, (RIN 0651-AC70) that would include a
consolidated set of rules relating to Board trial practice. More
specifically, the proposed subpart A of part 42 would set forth the
policies, practices, and definitions common to all trial proceedings
before the Board. Furthermore, the Office in separate rulemakings is
proposing to add a new subpart B to 37 CFR part 42 (RIN 0651-AC71) to
provide rules specific to inter partes review, a new subpart C to 37
CFR part 42 (RIN 0651-AC72) to provide rules specific to post-grant
review, and a new subpart E to 37 CFR part 42 (0651-AC74) to provide
rules specific to derivation. The notices of proposed rulemaking are
available on the USPTO Internet Web site at http://www.uspto.gov/.
Pursuant to § 18(d)(2) of the Leahy-Smith America Invents Act,
the Office is proposing the definition of a technological invention in
this rulemaking. This notice proposes to add the definition of
technological invention to new subpart D of 37 CFR 42, specifically to
proposed § 42.301(b).
Title 37 of the Code of Federal Regulations, Part 42, Subpart D,
the definition for technological invention is proposed to be added to
Section 42.301 as follows:
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Section 42.301: Proposed § 42.301(b) would set forth the
definition for technological invention for covered business method
patent review proceedings. The proposed definition of technological
invention would provide that in determining whether a patent is for a
technological invention the following will be considered on a case-by-
case basis: Whether the claimed subject matter as a whole (1) recites a
technological feature that is novel and unobvious over the prior art;
and (2) solves a technical problem using a technical solution. The
Office recognizes that, in prescribing a regulation to define
technological invention, the Office must consider the efficient
administration of the proceedings by the Office, and its ability to
timely complete them, consistent with 35 U.S.C. 326(b).
The proposed definition is consistent with the legislative history
of the Leahy-Smith America Invents Act. See, e.g., 157 Cong. Rec. S1364
(daily ed. Mar. 8, 2011) (statement of Sen. Schumer) ("The `patents
for technological inventions' exception only excludes those patents
whose novelty turns on a technological innovation over the prior art
and are concerned with a technical problem which is solved with a
technical solution and which requires the claims to state the technical
features which the inventor desires to protect."); 157 Cong. Rec.
H4497 (daily ed. June 23, 2011) (statement of Rep. Smith) ("Patents
for technological inventions are those patents whose novelty turns on a
technological innovation over the prior art and are concerned with a
technical problem which is solved with a technical solution."); 157
Cong. Rec. S5428 (daily ed. Sept. 8, 2011) (statement of Sen. Coburn)
("Patents for technological inventions are those patents whose novelty
turns on a technological innovation over the prior art and are
concerned with a technical problem which is solved with a technical
solution.").
Rulemaking Considerations
A. Administrative Procedure Act (APA): This notice proposes rules
of practice concerning the procedure for requesting a covered business
method patent review, and the trial process after initiation of such a
review. The changes being proposed in this notice do not change the
substantive criteria of patentability. These proposed changes involve
interpretive rules. See Cooper Tech. Co. v. Dudas, 536 F.3d 1330, 1336-
37 (Fed. Cir. 2008) (explaining that "a rule that merely clarifies or
explains existing law or regulations is `interpretive' " and holding
USPTO's rules implementing inter partes reexamination proceedings to be
interpretive rules not subject to the notice and comment requirements
of the Administrative Procedures Act); Nat'l Org. of Veterans'
Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir.
2001) (rule that clarifies interpretation of a statute is interpretive).
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law), and
thirty-day advance publication is not required pursuant to 5 U.S.C.
553(d) (or any other law). See Cooper Techs. Co. v. Dudas, 536 F.3d
1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35
U.S.C. 2(b)(2)(B), does not require notice and comment rulemaking for
"interpretative rules, general statements of policy, or rules of
agency organization, procedure, or practice") (quoting 5 U.S.C.
553(b)(A)). The Office, however, is publishing these changes and
the Initial Regulatory Flexibility Act analysis, below, for
comment as it seeks the benefit of the public's views on the Office's
proposed implementation of these provisions of the Leahy-Smith America
Invents Act.
B. Regulatory Flexibility Act: The Office estimates that 50
petitions for covered business method patent review will be filed in
fiscal year 2013. This will be the first fiscal year in which the
review proceeding will be available for an entire fiscal year.
The estimated number of covered business method patent review
petitions is based on the number of inter partes reexamination requests
filed in fiscal year 2011 for patents having an original classification
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in class 705 of the United States Patent Classification System. Class
705 is the classification for patents directed to data processing in
the following areas: Financial, business practice, management, or cost/
price determination. See
http://www.uspto.gov/web/patents/classification/uspc705/sched705.pdf.
The following is the class definition and description for Class
705:
This is the generic class for apparatus and corresponding
methods for performing data processing operations, in which there is
a significant change in the data or for performing calculation
operations wherein the apparatus or method is uniquely designed for
or utilized in the practice, administration, or management of an
enterprise, or in the processing of financial data.
This class also provides for apparatus and corresponding methods
for performing data processing or calculating operations in which a
charge for goods or services is determined.
This class additionally provides for subject matter described in
the two paragraphs above in combination with cryptographic apparatus
or method.
Subclasses 705/300-348 were established prior to complete
reclassification of all project documents. Documents that have not
yet been reclassified have been placed in 705/1.1. Until
reclassification is finished a complete search of 705/300-348 should
include a search of 705/1.1. Once the project documents in 705/1.1
have been reclassified they will be moved to the appropriate
subclasses and this note will be removed.
Scope of the Class
1. The arrangements in this class are generally used for
problems relating to administration of an organization, commodities
or financial transactions.
2. Mere designation of an arrangement as a "business machine"
or a document as a "business form" or "business chart" without
any particular business function will not cause classification in
this class or its subclasses.
3. For classification herein, there must be significant claim
recitation of the data processing system or calculating computer and
only nominal claim recitation of any external art environment.
Significantly claimed apparatus external to this class, claimed in
combination with apparatus under the class definition, which perform
data processing or calculation operations are classified in the
class appropriate to the external device unless specifically
excluded therefrom.
4. Nominally claimed apparatus external to this class in
combination with apparatus under the class definition is classified
in this class unless provided for in the appropriate external class.
5. In view of the nature of the subject matter included herein,
consideration of the classification schedule for the diverse art or
environment is necessary for proper search.
See Classification Definitions (Feb. 2011) available at
http://www.uspto.gov/web/patents/classification/uspc705/defs705.htm.
Accordingly, patents subject to covered business method patent
review are anticipated to be typically classifiable in Class 705. It is
anticipated that the number of patents in Class 705 that do not qualify
as covered business method patents would approximate the number of
patents classified in other classes that do qualify.
The Office received 20 requests for inter partes reexamination of
patents classified in Class 705 in fiscal year 2011. The Office in
estimating the number of petitions for covered business method patent
review to be higher than 20 requests due to an expansion of the grounds
for which review may be requested including subject matter eligibility
grounds, the greater coordination with litigation, and the provision
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that patents will be eligible for the proceeding regardless of filing
date of the application which resulted in the patent.
The Office has reviewed the entity status of patents for which
inter partes reexamination was requested from October 1, 2000, to
September 23, 2011. This data only includes filings granted a filing
date rather than filings in which a request was received. The first
inter partes reexamination was filed on July 27, 2001. A summary of
that review is provided in Table 1 below. As shown by Table 1, patents
known to be owned by a small entity represented 32.79% of patents for
which inter partes reexamination was requested. Based on an assumption
that the same percentage of patents owned by small entities will be
subject to covered business method patent review, it is estimated that
16 petitions for covered business method patent review would be filed
to seek review of patents owned by a small entity in fiscal year 2013,
the first full fiscal year that these proceedings will be available.
Table 1 - Inter partes Reexamination Requests Filed with
Parent Entity Type *
Number filed
Inter partes where parent Percent small
reexamination patent is small entity type of
Fiscal year requests filed entity type total
2011 329 123 37.39
2010 255 94 36.86
2009 240 62 25.83
2008 155 52 33.55
2007 127 35 27.56
2006 61 17 27.87
2005 59 18 30.51
2004 26 5 19.23
2003 21 12 57.14
2002 4 1 25.00
2001 1 0 0.00
Totals 1,278 419 32.79
* Small entity status determined by reviewing preexamination small entity
indicator for the parent patent.
Based on the number of patents issued during fiscal years 1995
through 1999 that paid the small entity third stage maintenance fee,
the number of patents issued during fiscal years 2000 through 2003 that
paid the small entity second stage maintenance fee, the number of
patents issued during fiscal years 2004 through 2007 that paid the
first stage maintenance fee, and the number of patents issued during
fiscal years 2008 through 2011 that paid a small entity issue fee,
there are no less than 375,000 patents owned by small entities in force
as of October 1, 2011.
Furthermore, the Office recognizes that there would be an offset to
this number for patents that expire earlier than 20 years from their
filing date due to a benefit claim to an earlier application or due to
a filing of a terminal disclaimer. The Office likewise recognizes that
there would be an offset in the opposite manner due to the accrual of
patent term extension and adjustment. The Office, however, does not
maintain data on the date of expiration by operation of a terminal
disclaimer. Therefore, the Office has not adjusted the estimate of
375,000 patents owned by small entities in force as of October 1, 2011.
While the Office maintains information regarding patent term extension
and adjustment accrued by each patent, the Office does not collect data
on the expiration date of patents that are subject to a terminal
disclaimer. As such, the Office has not adjusted the estimated of
375,000 patents owned by small entities in force as of October 1, 2011,
for accrual of patent term extension and adjustment, because in view of
the incomplete terminal disclaimer data issue, would be incomplete and
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any estimate adjustment would be administratively burdensome. Thus, it
is estimated that the number of small entity patents in force in fiscal
year 2013 will be at least 375,000.
Based on the estimated number of patents in force, the number of
small entity owned patents impacted by covered business method patent
review in fiscal year 2013 (16 patents) would be less than 0.005% (16/
375,000) of all patents in force that are owned by small entities. The
USPTO nonetheless has undertaken an Initial Regulatory Flexibility Act
Analysis of the proposed rule.
1. Description of the Reasons That Action by the Office Is Being
Considered: On September 16, 2011, the Leahy-Smith America Invents Act
was enacted into law (Pub. L. 112-29, 125 Stat. 284 (2011)). Section 18
of the Leahy-Smith America Invents Act provides for a transitional
program for covered business method patents which will employ the
standards and procedures of the post-grant review proceeding with a few
exceptions. For the implementation, § 6(f) of the Leahy-Smith
America Invents Act requires that the Director issue regulations to
carry out chapter 32 of title 35, United States Code, within one year
after the date of enactment. Public Law 112-29, § 6(f), 125 Stat.
284, 311 (2011).
2. Succinct Statement of the Objectives of, and Legal Basis for,
the Proposed Rules: The proposed rules seek to implement covered
business method patent review as authorized by the Leahy-Smith America
Invents Act. The Leahy-Smith America Invents Act requires that the
Director prescribe rules for the covered business method patent reviews
that result in a final determination not later than one year after the
date on which the Director notices the institution of a proceeding. The
one-year period may be extended for not more than 6 months if good
cause is shown. See 35 U.S.C. 326(a)(11). The Leahy-Smith America
Invents Act also requires that the Director, in prescribing rules for
covered business method patent reviews, consider the effect of the
rules on the economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to complete
timely the instituted proceedings. See 35 U.S.C. 326(b). Consistent
with the time periods provided in 35 U.S.C. 326(a)(11), the proposed
rules are designed to, except where good cause is shown to exist,
result in a final determination by the Patent Trial and Appeal Board
within one year of the notice of initiation of the review. This one-
year review will enhance the effect on the economy, and improve the
integrity of the patent system and the efficient administration of the
Office.
3. Description and Estimate of the Number of Affected Small
Entities: The Small Business Administration (SBA) small business size
standards applicable to most analyses conducted to comply with the
Regulatory Flexibility Act are set forth in 13 CFR 121.201. These
regulations generally define small businesses as those with fewer than
a specified maximum number of employees or less than a specified level
of annual receipts for the entity's industrial sector or North American
Industry Classification System (NAICS) code. As provided by the
Regulatory Flexibility Act, and after consultation with the Small
Business Administration, the Office formally adopted an alternate size
standard as the size standard for the purpose of conducting an analysis
or making a certification under the Regulatory Flexibility Act for
patent-related regulations. See Business Size Standard for Purposes of
United States Patent and Trademark Office Regulatory Flexibility
Analysis for Patent-Related Regulations, 71 FR 67109 (Nov. 20, 2006),
1313 Off. Gaz. Pat. Office 60 (Dec. 12, 2006). This alternate small
business size standard is SBA's previously established size standard
that identifies the criteria entities must meet to be entitled to pay
reduced patent fees. See 13 CFR 121.802. If patent applicants identify
themselves on a patent application as qualifying for reduced patent
fees, the Office captures this data in the Patent Application Location
and Monitoring (PALM) database system, which tracks information on each
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patent application submitted to the Office.
Unlike the SBA small business size standards set forth in 13 CFR
121.201, the size standard for USPTO is not industry-specific. The
Office's definition of a small business concern for Regulatory
Flexibility Act purposes is a business or other concern that: (1) Meets
the SBA's definition of a "business concern or concern" set forth in
13 CFR 121.105; and (2) meets the size standards set forth in 13 CFR
121.802 for the purpose of paying reduced patent fees, namely an
entity: (a) Whose number of employees, including affiliates, does not
exceed 500 persons; and (b) which has not assigned, granted, conveyed,
or licensed (and is under no obligation to do so) any rights in the
invention to any person who made it and could not be classified as an
independent inventor, or to any concern which would not qualify as a
non-profit organization or a small business concern under this
definition. See Business Size Standard for Purposes of United States
Patent and Trademark Office Regulatory Flexibility Analysis for Patent-
Related Regulations, 71 FR at 67112 (Nov 20, 2006), 1313 Off. Gaz. Pat.
Office at 63 (Dec. 12, 2006).
As discussed above, it is anticipated that 50 petitions for covered
business method patent review will be filed in fiscal year 2013. The
Office has reviewed the percentage of patents for which inter partes
reexamination was requested from October 1, 2000 to September 23, 2011.
A summary of that review is provided in Table 1 above. As demonstrated
by Table 1, patents known to be owned by a small entity represent
32.79% of patents for which inter partes reexamination was requested.
Based on an assumption that the same percentage of patents owned by
small entities will be subject to the new review proceedings, it is
estimated that 16 patents owned by small entities wouldbe affected by
covered business method patent review.
The USPTO estimates that 2.5% of patent owners will file a request
for adverse judgment prior to a decision to institute and that another
2.5% will file a request for adverse judgment or fail to participate
after initiation. Specifically, an estimated 2 patent owners will file
a request for adverse judgment or fail to participate after institution
in covered business method proceedings. Based on the percentage of
small entity owned patents that were the subject of inter partes
reexamination (32.79%) from October 1, 2000 to September 23, 2011, it
is estimated that 1 small entity will file such request or fail to
participate in covered business method patent review.
Under the proposed rules, prior to determining whether to institute
a review, the patent owner may file an optional patent owner
preliminary response to the petition. Given the new time period
requirements to file a petition for review before the Board relative to
patent enforcement proceedings and the desirability to avoid the cost
of a trial and delays to related infringement actions, it is
anticipated that 90% of petitions, other than those for which a request
for adverse judgment is filed, will result in the filing of a patent
owner preliminary response. Specifically, the Office estimates that 45
patent owners will file a preliminary response to a covered business
method patent petition. Based on the percentage of small entity owned
patents that were the subject of inter partes reexamination (32.79%),
it is estimated that 15 small entities will file a preliminary response
to a covered business method patent review petition filed in fiscal
year 2013.
Under the proposed rules, the Office will determine whether to
institute a trial within three months after the earlier of: (1) The
submission of a patent owner preliminary response, (2) the waiver of
filing a patent owner preliminary response, or (3) the expiration of
the time period for filing a patent owner preliminary response. If the
Office decides not to institute a trial, the petitioner may file a
request for reconsideration of the Office's decision. In estimating the
number of requests for reconsideration, the Office considered the
percentage of inter partes reexaminations that were denied relative to
those that were ordered (24 divided by 342, or 7%) in fiscal year 2011.
See Reexamination - FY 2011, http://www.uspto.gov/patents/Reexamination_
operational_statistic_through_FY2011Q4.pdf. The Office also considered
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the impact of: (1) patent owner preliminary responses under newly
authorized in 35 U.S.C. 323, (2) the enhanced thresholds for instituting
reviews set forth in 35 U.S.C. 324(a), which would tend to increase the
likelihood of dismissing a petition for review, and (3) the more
restrictive time period for filing a petition for review in 35 U.S.C.
325(b), which would tend to reduce the likelihood of dismissing a petition.
Based on these considerations, it is estimated that 10% of the petitions
for review (5 divided by 49) would be dismissed.
Thus, the Office estimates that no more than 5 entities (2 small
entities) would be subject to a denial of the petition to initiate
covered business method review. This estimate is based upon either the
patent failing to meet the proposed definition for technological
invention or because the petitioner failed to meet the likelihood of
success standard. Of the remaining 90% of petitions that proceed to
trial, all entities (large or small) could be subject to the proposed
definition for technological invention since jurisdictional issues may
be raised at any time.
During fiscal year 2011, the Office issued 21 decisions following a
request for reconsideration of a decision on appeal in inter partes
reexamination. The average time from original decision to decision on
reconsideration was 4.4 months. Thus, the decisions on reconsideration
were based on original decisions issued from July 2010 until June 2011.
During this time period, the Office mailed 63 decisions on appeals in
inter partes reexamination. See BPAI Statistics - Receipts and
Dispositions by Technology Center, http://www.uspto.gov/ip/boards/bpai/
stats/receipts/index.jsp (monthly data). Based on the assumption that
the same rate of reconsideration (21 divided by 63 or 33.333%) will occur,
the Office estimates that 2 requests for reconsideration will be filed.
Based on the percentage of small entity owned patents that were the subject
of inter partes reexamination (32.79%),it is estimated that 1 small entity
will file a request for a reconsiderationof a decision dismissing the
petition for post-grant or covered business method patent review filed
in fiscal year 2013.
The Office reviewed motions, oppositions, and replies in a number
of contested trial proceedings before the trial section of the Board.
The review included determining whether the motion, opposition, and
reply were directed to patentability grounds and non-priority non-
patentability grounds. Based on the review, it is anticipated that
covered business method patent reviews will have an average of 8.89
motions, oppositions, and replies per trial after institution.
Settlement is estimated to occur in 20% of instituted trials at various
points of the trial. In the trials that are settled, it is estimated
that only 50% of the noted motions, oppositions, and replies would be
filed.
After a trial has been instituted but prior to a final written
decision, parties to a covered business method patent review may
request an oral hearing. It is anticipated that 45 requests for oral
hearings will be filed based on the number of requests for oral
hearings in inter partes reexamination, the stated desirability for
oral hearings during the legislative process, and the public input
received prior to this notice of proposed rulemaking. Based on the
percentage of small entity owned patents that were the subject of inter
partes reexamination (32.79%), it is estimated that 15 small entities
will file a request for oral hearing in the covered business method
patent reviews instituted in fiscal year 2013.
Parties to a covered business method patent review may file
requests to treat a settlement as business confidential, and request
for adverse judgment. A written request to make a settlement agreement
available may also be filed. Given the short time period set for
conducting trials, it is anticipated that the alternative dispute
resolution options will be infrequently used. The Office estimates that
2 requests to treat a settlement as business confidential, and 10
requests for adverse judgment, default adverse judgment, or settlement
notices will be filed. The Office also estimates that 2 requests to
make a settlement available will be filed. Based on the percentage of
small entity owned patents that were the subject of inter partes
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reexamination (32.79%), it is estimated that 1 small entity will file a
request to treat a settlement as business confidential and 3 small
entities will file a request for adverse judgment, default adverse
judgment notices, or settlement notices in the reviews instituted in
fiscal year 2013.
Parties to a covered business method patent review may seek
judicial review of the final decision of the Board. Historically, 33%
of examiner's decisions in inter partes reexamination proceedings have
been appealed to the Board. It is anticipated that 16% of final
decisions of the Board would be appealed. The reduction in appeal rate
is based on the higher threshold for institution, the focused process,
and the experience of the Board in conducted contested cases.
Therefore, it is estimated that 5 parties would seek judicial review of
the final decisions of the Board in covered business method
patent reviews instituted in fiscal year 2013. Furthermore, based on
the percentage of small entity owned patents that were the subject of
inter partes reexamination (32.79%), it is estimated that 2 small
entities would seek judicial review of final decisions of the Board in
the covered business method patent reviews instituted in fiscal year
2013.
4. Description of the Reporting, Recordkeeping, and Other
Compliance Requirements of the Proposed Rule, Including an Estimate of
the Classes of Small Entities Which Will Be Subject to the Requirement
and the Type of Professional Skills Necessary for Preparation of the
Report or Record: Covered business method patent reviews would be
limited to business method patents that are not patents for
technological inventions. Under the proposed rules, a person who is not
the owner of a patent may file a petition to institute a review of the
patent, with a few exceptions. Given this, it is anticipated that a
petition for review is likely to be filed by an entity practicing in
the business method field for covered business methods.
Preparation of the petition would require analyzing the patent
claims, locating evidence supporting arguments of unpatentability, and
preparing the petition seeking review of the patent. This notice
provides the proposed procedural requirements that are common for the
new trials. Additional requirements are provided in contemporaneous
trial specific proposed rulemaking. The procedures for petitions to
institute a covered business method patent review are proposed in
§§ 42.5, 42.6, 42.8, 42.11, 42.13, 42.20, 42.21, 42.22,
42.24(a)(3), 42.63, 42.65, 42.203, 42.205, and 42.302 through 42.304.
The skills necessary to prepare a petition for review and to
participate in a trial before the Patent Trial and Appeal Board would
be similar to those needed to prepare a request for inter partes
reexamination, to represent a party in an inter partes reexamination,
and to represent a party in an interference proceeding before the
Patent Trial and Appeal Board. The level of skill is typically
possessed by a registered patent practitioner having devoted
professional time to the particular practice area, typically under the
supervision of a practitioner skilled in the particular practice area.
Where authorized by the Board, a non-registered practitioner may be
admitted pro hac vice, on a case-by-case basis based on the facts and
circumstances of the trial and party, as well as the skill of the
practitioner.
The cost of preparing a petition for covered business method patent
review is estimated to be 33.333% higher than the cost of preparing an
inter partes review petition because the petition for covered business
method patent review may seek to institute a proceeding on additional
grounds such as subject matter eligibility. The American Intellectual
Property Law Association's AIPLA Report of the Economic Survey 2011
reported that the average cost of preparing a request for inter partes
reexamination was $46,000. Based on the Office's consideration of the
work required to prepare and file such a request, the Office estimates
that the cost of preparing a petition for covered business method
patent review would be $61,333 (including expert costs).
The filing of a petition for review would also require payment by
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the petitioner of the appropriate petition fee to recover the aggregate
cost for providing the review. The appropriate petition fee would be
determined by the number of claims for which review is sought and the
type of review. The proposed fees for filing a petition for covered
business method patent review would be: $35,800 to request review of 20
or fewer claims, $44,750 to request review of 21 to 30 claims, $53,700
to request review of 31 to 40 claims, $71,600 to request review of 41
to 50 claims, $89,500 to request review of 51 to 60 claims, and an
additional $35,800 to request review of additional groups of 10 claims.
In setting fees, the estimated information technology cost to
establish the process and maintain the filing and storage system
through 2017 is to be recovered by charging each petition $2,270. The
remainder of the fee is to recover the cost for judges to determine
whether to institute a review and conduct the review, together with a
proportionate share of indirect costs, e.g., rent, utilities,
additional support, and administrative costs. Based on the direct and
indirect costs, the fully burdened cost per hour for judges to decide a
petition and conduct a review is estimated to be $258.32.
For a petition for covered business method patent review with 20 or
fewer challenged claims, it is anticipated that 121 hours of judge time
would be required. For 21 to 30 challenged claims, an additional 30
hours is anticipated for a total of 151 hours of judge time. For 31 to
40 challenged claims, an additional 60 hours is anticipated for a total
of 181 hours of judge time. For 41 to 50 challenged claims, an
additional 121 hours is anticipated for a total of 242 hours of judge
time. For 51 to 60 challenged claims, an additional 181 hours is
anticipated for a total of 302 hours of judge time. The increase in
adjustment reflects the added complexity that typically occurs as more
claims are in dispute.
The proposed rules would permit the patent owner to file a
preliminary response to the petition setting forth the reasons why no
review should be initiated. The procedures for a patent owner to file a
preliminary response as an opposition are proposed in §§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.23, 42.24(b), 42.51, 42.52, 42.53, 42.54,
42.63, 42.64, 42.65, 42.107, 42.120, 42.207, and 42.220. The patent
owner is not required to file a preliminary response. The Office
estimates that the preparation and filing of a patent owner preliminary
response would require 100 hours of professional time and cost $34,000
(including expert costs). The AIPLA Report of the Economic Survey 2011
reported that the average cost for inter partes reexamination including
of the request ($46,000), the first patent owner response, and third
party comments was $75,000 (see I-175) and the median billing rate for
professional time of $340 per hour for attorneys in private firms (see
8). Thus, the cost of the first patent owner reply and the third party
statement is $29,000. The Office finds these costs to be reasonable
estimates. The patent owner reply and third party statement, however,
occur after the examiner has made an initial threshold determination
and made only the appropriate rejections. Accordingly, it is
anticipated that filing a patent owner preliminary response to a
petition for review would cost more than the initial reply in a
reexamination, or an estimated $34,000 (including expert costs).
The Office will determine whether to institute a trial within three
months after the earlier of: (1) The submission of a patent owner
preliminary response, (2) the waiver of filing a patent owner
preliminary response, or (3) the expiration of the time period for
filing a patent owner preliminary response. If the Office decides not
to institute a trial, the petitioner may file a request for
reconsideration of the Office's decision. It is anticipated that a
request for reconsideration will require 80 hours of professional time
to prepare and file, at a cost of $340 per hour, for a total estimated
cost of $27,200. This estimate is based on the complexity of the issues
and desire to avoid time bars imposed by 35 U.S.C. 325(b).
Following institution of a trial, the parties may be authorized to
file various motions, e.g., motions to amend and motions for additional
discovery. Where a motion is authorized, an opposition may be authorized,
and where an opposition is authorized, a reply may be authorized. The
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procedures for filing a motion are proposed in §§ 42.6, 42.8, 42.11,
42.13, 42.21, 42.22, 42.24(a)(5), 42.51, 42.52, 42.53, 42.54, 42.63,
42.64, 42.65, 42.221, and 42.223. The procedures for filing an opposition
are proposed in §§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.23,
42.24(b), 42.51, 42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.207, and
42.220. The procedures for filing a reply are proposed in §§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.23, 42.24(c), 42.51, 42.52, 42.53,
42.54, 42.63, and 42.65. As discussed previously, the Office estimates
that the average covered business method patent review will have 8.89
motions, oppositions, and replies after institution.
The AIPLA Report of the Economic Survey 2011 reported that the
average cost in contested cases before the trial section of the Board
prior to the priority phase was $322,000 per party. Because of the
overlap of issues in patentability grounds, it is expected that the
cost per motion will decline as more motions are filed in a proceeding.
It is estimated that a motion, opposition, or reply in a derivation
would cost $34,000, which is estimated by dividing the total public
cost for all motions in current contested cases divided by the
estimated number of motions in derivations under 35 U.S.C. 135, as
amended. The cost of a motion, opposition, or reply in a covered
business method patent review is estimated at $44,200 (including expert
costs), reflecting the reduction in overlap between motions relative to
derivation. Based on the work required to file and prepare such briefs,
the Office considers the reported cost as a reasonable estimate.
After a trial has been instituted but prior to a final written
decision, parties to a covered business method patent review may
request an oral hearing. The procedure for filing requests for oral
argument is proposed in § 42.70. The AIPLA Report of the Economic
Survey 2011 reported that the third quartile cost of an ex parte appeal
with an oral argument is $12,000, while the third quartile cost of an
ex parte appeal without an oral argument is $6,000. In view of the
reported costs, which the Office finds reasonable, and the increased
complexity of an oral hearing with multiple parties, it is estimated
that the cost per party for oral hearings would be $6,800 or $800 more
than the reported third quartile cost for an ex parte oral hearing.
Parties to a covered business method patent review may file
requests to treat a settlement as business confidential, or file a
request for adverse judgment. A written request to make a settlement
agreement available may also be filed. The procedures to file requests
that a settlement be treated as business confidential are proposed in
§ 42.74(c). The procedures to file requests for adverse judgment
are proposed in § 42.73(b). The procedures to file requests to make
a settlement agreement available are proposed in § 42.74(c)(2). It
is anticipated that requests to treat a settlement as business
confidential will require 2 hours of professional time or $680. It is
anticipated that requests for adverse judgment will require 1 hour of
professional time or $340. It is anticipated that requests to make a
settlement agreement available will require 1 hour of professional time
or $340. The requests to make a settlement agreement available will
also require payment of a fee of $400 specified in proposed § 42.15(d).
Parties to a review proceeding may seek judicial review of the
judgment of the Board. The procedures to file notices of judicial
review of a Board decision, including notices of appeal and notices of
election provided for in 35 U.S.C. 141, 142, 145, and 146, are proposed
in §§ 90.1 through 90.3. The submission of a copy of a notice
of appeal or a notice of election is anticipated to require 6 minutes
of professional time at a cost of $34.
5. Description of Any Significant Alternatives to the Proposed
Rules Which Accomplish the Stated Objectives of Applicable Statutes and
Which Minimize Any Significant Economic Impact of the Rules on Small
Entities:
Definition of Technological Invention: The definition proposed is
consistent with the legislative history of the Leahy-Smith America
Invents Act. See, e.g., 157 Cong. Rec. S1364 (daily ed. Mar. 8, 2011)
(statement of Sen. Schumer) ("The `patents for technological
inventions' exception only excludes those patents whose novelty turns
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on a technological innovation over the prior art and are concerned with
a technical problem which is solved with a technical solution and which
requires the claims to state the technical features which the inventor
desires to protect."). The Office considered proposing that a
technological invention be defined as any claimed invention in any
patent having an original classification in any class other than Class
705 of the United States Patent Classification System. Adoption of the
alternative definition as applied to certain patents would have been
either overly narrow or overly broad. For example, there are patents
that are originally classified in Class 705 which solve technical
problems with technical solutions and which are patentable over the
prior art based on a technological innovation. Similarly there are
patents that are originally classified in classes other than Class 705
which fail to solve a technical problem with a technical solution and
fail to be patentable over the prior art based on a technological
innovation. For those reasons, the other considered definition was not
adopted in view of the legislative history.
Size of petitions and motions: The Office considered whether to
apply a page limit and what an appropriate page limit would be. The
Office does not currently have a page limit on inter partes
reexamination requests. The inter partes reexamination requests from
October 1, 2010 to June 30, 2011, averaged 246 pages. Based on the
experience of processing inter partes reexamination requests, the
Office finds that the very large size of the requests has created a
burden on the Office that hinders the efficiency and timeliness of
processing the requests, and creates a burden on patent owners. The
quarterly reported average processing time from the filing of a request
to the publication of a reexamination certificate ranged from 28.9
months to 41.7 months in fiscal year 2009, from 29.5 months to 37.6
months in fiscal year 2010, and from 31.9 to 38.0 months in fiscal year
2011. See Reexaminations - FY 2011, http://www.uspto.gov/patents/
Reexamination_operational_statistic_through_FY2011Q4.pdf.
By contrast, the Office has a page limit on the motions filed in
contested cases, except where parties are specifically authorized to
exceed the limitation. The typical contested case proceeding is subject
to a standing order that sets a 50 page limit for motions and
oppositions on priority, a 15 page limit for miscellaneous motions
(§ 41.121(a)(3)) and oppositions (§ 41.122), and a 25 page
limit for other motions (§ 41.121(a)(2)) and oppositions to other
motions. In typical proceedings, replies are subject to a 15 page limit
if directed to priority, 5 page limit for miscellaneous issues, and 10
page limit for other motions. The average contested case was terminated
in 10.1 months in fiscal year 2009, in 12 months in fiscal year 2010,
and 9 months in fiscal year 2011. The percentage of contested cases
terminated within 2 years was 93.7% in fiscal year 2009, 88.0% in
fiscal year 2010, and 94.0% in fiscal year 2011. See BPAI Statistics -
Performance Measures,
http://www.uspto.gov/ip/boards/bpai/stats/perform/index.jsp.
Comparing the average time period for terminating a contested case,
10.0 to 12.0 months, with the average time period, during fiscal years
2009 through 2011, for completing an inter partes reexamination, 28.9 to
41.7 months, indicates that the average interference takes from 24%
(10.0/41.7) to 42% (12.0/28.9) of the time of the average inter partes
reexamination. While several factors contribute to the reduction in
time, limiting the size of the requests and motions is considered a
significant factor. Proposed § 42.24 would provide page limits for
petitions, motions, oppositions, and replies. 35 U.S.C. 326(b) provides
considerations that are to be taken into account when prescribing
regulations including the integrity of the patent system, the efficient
administration of the Office, and the ability to complete timely the
trials. The page limits proposed in these rules are consistent with
these considerations.
Federal courts routinely use page limits in managing motions
practice as "[e]ffective writing is concise writing." Spaziano v.
Singletary, 36 F.3d 1028, 1031 n.2 (11th Cir. 1994). Many district
courts restrict the number of pages that may be filed in a motion
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including, for example, the District of Delaware, the District of New
Jersey, the Eastern District of Texas, the Northern, Central, and
Southern Districts of California, and the Eastern District of Virginia.
Federal courts have found that page limits ease the burden on both
the parties and the courts, and patent cases are no exception. Eolas
Techs., Inc. v. Adobe Sys., Inc., No. 6:09-CV-446, at 1 (E.D. Tex.
Sept. 2, 2010) ("The Local Rules' page limits ease the burden of
motion practice on both the Court and the parties."); Blackboard, Inc.
v. Desire2Learn, Inc., 521 F. Supp. 2d 575, 576 (E.D. Tex. 2007) (The
parties "seem to share the misconception, popular in some circles,
that motion practice exists to require federal judges to shovel through
steaming mounds of pleonastic arguments in Herculean effort to uncover
a hidden gem of logic that will ineluctably compel a favorable ruling.
Nothing could be farther from the truth."); Broadwater v. Heidtman
Steel Prods., Inc., 182 F. Supp. 2d 705, 710 (S.D. Ill. 2002)
("Counsel are strongly advised, in the future, to not ask this Court
for leave to file any memoranda (supporting or opposing dispositive
motions) longer than 15 pages. The Court has handled complicated patent
cases and employment discrimination cases in which the parties were
able to limit their briefs supporting and opposing summary judgment to
10 or 15 pages." (Emphasis omitted)).
The Board's contested cases experience with page limits in motions
practice is consistent with that of the federal courts. The Board's use
of page limits has shown it to be beneficial without being unduly
restrictive for the parties. Page limits have encouraged the parties to
focus on dispositive issues, easing the burden of motions practice on
the parties and on the Board.
The Board's contested cases experience with page limits is informed
by its use of different approaches over the years. In the early 1990s,
page limits were not routinely used for motions, and the practice
suffered from lengthy and unacceptable delays. To reduce the burden on
the parties and on the Board and thereby reduce the time to decision,
the Board instituted page limits in the late 1990s for every motion.
Page limit practice was found to be effective in reducing the burdens
on the parties and improving decision times at the Board. In 2006, the
Board revised the page limit practice and allowed unlimited findings of
fact and generally limited the number of pages containing argument. Due
to abuses of the system, the Board recently reverted back to page
limits for the entire motion (both argument and findings of fact).
The Board's current page limits are consistent with the 25 page
limits in the Northern, Central, and Southern Districts of California,
and the Middle District of Florida and exceed the limits in the
District of Delaware (20), the Northern District of Illinois (15), the
District of Massachusetts (20), the Eastern District of Michigan (20),
the Southern District of Florida (20), and the Southern District of
Illinois (20).
In a typical proceeding before the Board, a party may be authorized
to file a single motion for unpatentability based on prior art, a
single motion for unpatentability based upon failure to comply with 35
U.S.C. 112, lack of written description, and/or enablement, and
potentially another motion for lack of compliance with 35 U.S.C. 101,
although a 35 U.S.C. 101 motion may be required to be combined with the
35 U.S.C. 112 motion. Each of these motions is currently limited to 25
pages in length, unless good cause is shown that the page limits are
unduly restrictive for a particular motion.
A petition requesting the institution of a trial proceeding would
be similar to motions currently filed with the Board. Specifically,
petitions to institute a trial seek a final written decision that the
challenged claims are unpatentable, where derivation is a form of
unpatentability. Accordingly, a petition to institute a trial based on
prior art would, under current practice, be limited to 25 pages, and by
consequence, a petition raising unpatentability based on prior art and
unpatentability under 35 U.S.C. 101 and/or 112 would be limited to 50
pages.
Under the proposed rules, a covered business method patent review
petition would be based upon any grounds identified in 35 U.S.C.
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321(b), e.g., failure to comply with 35 U.S.C. 101, 102 (based on
certain references), 103, and 112 (except best mode). Under current
practice, a party would be limited to filing two or three motions, each
limited to 25 pages, for a maximum of 75 pages. Where there is more
than one motion for unpatentability based upon different statutory
grounds, the Board's experience is that the motions contain similar
discussions of technology and claim constructions. Such overlap is
unnecessary where a single petition for unpatentability is filed. Thus,
the proposed 70 page limit is considered sufficient in all but
exceptional cases.
The proposed rule would provide that petitions to institute a trial
must comply with the stated page limits but may be accompanied by a
motion that seeks to waive the page limits. The petitioner must show in
the motion how a waiver of the page limits is in the interests of
justice. A copy of the desired non-page limited petition must accompany
the motion. Generally, the Board would decide the motion prior to
deciding whether to institute the trial.
Current Board practice provides a limit of 25 pages for other
motions and 15 pages for miscellaneous motions. The Board's experience
is that such page limits are sufficient for the parties filing them and
do not unduly burden the opposing party or the Board. Petitions to
institute a trial would generally replace the current practice of
filing motions for unpatentability, as most motions for relief are
expected to be similar to the current interference miscellaneous motion
practice. Accordingly, the proposed 15 page limit is considered
sufficient for most motions but may be adjusted where the limit is
determined to be unduly restrictive for the relief requested.
Proposed § 42.24(b) would provide page limits for oppositions
filed in response to motions. Current contested cases practice provides
an equal number of pages for an opposition as its corresponding motion.
This is generally consistent with motions practice in federal courts.
The proposed rule would continue the current practice.
Proposed § 42.24(c) would provide page limits for replies.
Current contested cases practice provides a 15 page limit for priority
motion replies, a 5 page limit for miscellaneous
(procedural) motion replies, and a 10 page limit for all other motions.
The proposed rule is consistent with current contested case practice
for procedural motions. The proposed rule would provide a 15 page limit
for reply to petitions requesting a trial, which the Office believes is
sufficient based on current practice. Current contested cases practice
has shown that such page limits do not unduly restrict the parties and,
in fact, have provided sufficient flexibility to parties to not only
reply to the motion but also help to focus on the issues. Thus, it is
anticipated that default page limits would minimize the economic impact
on small entities by focusing on the issues in the trials.
The Leahy-Smith America Invents Act requires that the Director, in
prescribing rules for covered business method patent reviews, consider
the effect of the rules on the economy, the integrity of the patent
system, the efficient administration of the Office, and the ability of
the Office to complete timely the instituted proceedings. See 35 U.S.C.
326(b). In view of the actual results of the duration of proceedings in
inter partes reexamination (without page limits) and contested cases
(with page limits), proposing procedures with reasonable page limits
would be consistent with the objectives set forth in the Leahy-Smith
America Invents Act. Based on our experience on the time needed to
complete a non-page limited proceeding, the option of non-page limited
proceedings was not adopted.
Fee Setting: 35 U.S.C. 321(a) requires the Director to establish
fees to be paid by the person requesting the review in such amounts as
the Director determines to be reasonable, considering the aggregate
costs of the review. In contrast to current 35 U.S.C. 311(b) and
312(c), the Leahy-Smith America Invents Act requires the Director to
establish more than one fee for reviews based on the total cost of
performing the reviews, and does not provide for refund of any part of
the fee when the Director determines that the review should not be
initiated.
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35 U.S.C. 322(a)(1) further requires that the fee established by
the Director under 35 U.S.C. 321 accompany the petition on filing.
Accordingly, in interpreting the fee setting authority in 35 U.S.C.
321(a), it is reasonable that the Director should set a number of fees
for filing a petition based on the anticipated aggregate cost of
conducting the review depending on the complexity of the review, and
require payment of the fee upon filing of the petition.
Based on experience with contested cases and inter partes
reexamination proceedings, the following characteristics of requests
were considered as potential factors for fee setting as each would
likely impact the cost of providing the new services. The Office also
considered the relative difficulty in administrating each option in
selecting the characteristics for which different fees should be paid
for requesting review.
I. Adopted Option. Number of claims for which review is requested.
The number of claims often impacts the complexity of the request and
increases the demands placed on the deciding officials. Cf. In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1309 (Fed.
Cir. 2011) (limiting number of asserted claims is appropriate to
efficiently manage a case). Moreover, the number of claims for which
review is requested can be easily determined and administered, which
avoids delays in the Office and the impact on the economy or patent
system that would occur if an otherwise meritorious request is refused
due to improper fee payment. Any subsequent petition would be time
barred in view of 35 U.S.C. 325.
II. Alternative Option I. Number of grounds for which review is
requested. The Office has experience with large numbers of cumulative
grounds being presented in inter partes reexaminations which often add
little value to the proceedings. Allowing for a large number of grounds
to be presented on payment of an additional fee(s) is not favored.
Determination of the number of grounds in a request may be contentious
and difficult and may result in a large amount of high-level petition
work. As such, the option would have a negative impact on small
entities. Moreover, interferences instituted in the 1980s and early
1990s suffered from this problem as there was no page limit for motions
and the parties had little incentive to focus the issues for decision.
The resulting interference records were often a collection of disparate
issues and evidence. This led to lengthy and unwarranted delays in
deciding interference cases as well as increased costs for parties and
the Office. Accordingly, this alternative is inconsistent with
objectives of the Leahy-Smith America Invents Act that the Director, in
prescribing rules for the covered business method patent reviews,
consider the effect of the rules on the economy, the integrity of the
patent system, the efficient administration of the Office, and the
ability of the Office to timely complete the instituted proceedings.
III. Alternative Option II. Pages of argument. The Office has
experience with large requests in inter partes reexamination in which
the merits of the proceedings could have been resolved in a shorter
request. Allowing for unnecessarily large requests on payment of an
additional fee(s) is not favored. Moreover, determination of what
should be counted as "argument" as compared with "evidence" has
often proven to be contentious and difficult as administered in the
current inter partes reexamination appeal process.
In addition, the trial section of the Board recently experimented
with motions having a fixed page limit for the argument section and an
unlimited number of pages for the statement of facts. Unlimited pages
for the statement of facts led to a dramatic increase in the number of
alleged facts and pages associated with those facts. For example, one
party used approximately 10 pages for a single "fact" that merely cut
and pasted a portion of a declarant's cross-examination. Based upon the
trial section's experience with unlimited pages of facts, the Board
recently reverted back to a fixed page limit for the entire motion
(argument and facts). Accordingly, this alternative is inconsistent
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with objectives of the Leahy-Smith America Invents Act that the
Director, in prescribing rules for the covered business method patent
reviews, consider the effect of the rules on the economy, the integrity
of the patent system, the efficient administration of the Office, and
the ability of the Office to complete timely the instituted
proceedings.
IV. Alternative Option III. The Office considered an alternative
fee setting regime in which fees would be charged at various steps in
the review process, a first fee on filing of the petition, a second fee
if instituted, a third fee on filing a motion in opposition to amended
claims, etc. The alternative fee setting regime would hamper the
ability of the Office to complete timely reviews, would result in
dismissal of pending proceedings with patentability in doubt due to
non-payment of required fees by third parties, and would be
inconsistent with 35 U.S.C. 322 that requires the fee established by
the Director be paid at the time of filing the petition. Accordingly,
this alternative is inconsistent with objectives of the Leahy-Smith
America Invents Act that the Director, in prescribing rules for covered
business method patent reviews, consider the effect of the rules on the
economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to complete
timely the instituted proceedings.
V. Alternative Option IV. The Office considered setting reduced
fees for small and micro entities and to provide refunds if a review is
not instituted. The Office may set the fee to recover the cost of
providing the services under 35 U.S.C. 41(d)(2)(a). Fees set under this
authority are not reduced for small entities, see 35 U.S.C. 42(h)(1),
as amended. Moreover, the Office does not have authority to refund fees
that were not paid by mistake or in excess of that owed. See 35 U.S.C.
42(d).
Discovery: The Office considered a procedure for discovery similar
to the one available during district court litigation. Discovery of
that scope has been criticized sharply, particularly when attorneys use
discovery tools as tactical weapons, which hinder the "just, speedy,
and inexpensive determination of every action and proceedings." See
Introduction to An E-Discovery Model Order available at
http://www.cafc.uscourts.gov/images/stories/announcements/Ediscovery_
Model_Order.pdf. Accordingly, this alternative would have been inconsistent
with objectives of the Leahy-Smith America Invents Act that the
Director, in prescribing rules for the covered business method patent
reviews, consider the effect of the rules on the economy, the integrity
of the patent system, the efficient administration of the Office, and
the ability of the Office to complete timely the instituted
proceedings.
Additional discovery increases trial costs and increases the
expenditures of time by the parties and the Board. To promote effective
discovery, the proposed rule would require a showing of good cause to
authorize additional requested discovery. To show good cause, a party
must make a particular and specific demonstration of fact. The moving
party must also show that it was fully diligent in seeking discovery,
and that there is no undue prejudice to the non-moving party.
The Office has proposed a default scheduling order to provide
limited discovery as a matter of right and also the ability to seek
additional discovery on a case-by-case basis. In weighing the need for
additional discovery, should a request be made, the economic impact on
the opposing party would be considered which would tend to limit
additional discovery where a party is a small entity.
Pro Hac Vice: The Office considered whether to allow counsel to
appear pro hac vice. In certain cases, highly skilled, but non-
registered, attorneys have appeared satisfactorily before the Board in
contested cases. The Board may recognize counsel pro hac vice during a
proceeding upon a showing of good cause. Proceedings before the Office
can be technically complex. Consequently, the grant of a motion to
appear pro hac vice is a discretionary action taking into account the
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specifics of the proceedings. Similarly, the revocation of pro hac vice
is a discretionary action taking into account various factors,
including incompetence, unwillingness to abide by the Office's Rules of
Professional Conduct, prior findings of misconduct before the Office in
other proceedings, and incivility.
The Board's past practice has required the filing of a motion by a
registered patent practitioner seeking pro hac vice representation
based upon a showing of: (1) How qualified the unregistered
practitioner is to represent the party in the proceeding when measured
against a registered practitioner, and, (2) whether the party has a
genuine need to have the particular unregistered practitioner represent
it during the proceeding. This practice has proven effective in the
limited number of contested cases where such requests have been
granted. The proposed rule, if adopted, would allow for this practice
in the new proceedings authorized by the Leahy-Smith America Invents
Act.
The proposed rules would provide a limited delegation to the Board
under 35 U.S.C. 2(b)(2) and 32 to regulate the conduct of counsel in
Board proceedings. The proposed rule would delegate to the Board the
authority to conduct counsel disqualification proceedings while the
Board has jurisdiction over a proceeding. The rule would also delegate
to the Chief Administrative Patent Judge the authority to make final a
decision to disqualify counsel in a proceeding before the Board for the
purposes of judicial review. This delegation would not derogate from
the Director the prerogative to make such decisions, nor would it
prevent the Chief Administrative Patent Judge from further delegating
authority to an administrative patent judge.
The Office considered broadly permitting practitioners not
registered to practice by the Office to represent parties in trial as
well as categorically prohibiting such practice. A prohibition on the
practice would be inconsistent with the Board's experience, and more
importantly, might result in increased costs particularly where a small
entity has selected its district court litigation team for
representation before the Board and has a patent review filed after
litigation efforts have commenced. Alternatively, broadly making the
practice available would create burdens on the Office in administering
the trials and in completing the trial within the established time
frame, particularly if the selected practitioner does not have the
requisite skill. In weighing the desirability of admitting a
practitioner pro hac vice, the economic impact on the party in interest
would be considered which would tend to increase the likelihood that a
small entity could be represented by a non-registered practitioner.
Accordingly, the alternatives to eliminate pro hac vice practice or to
permit more broadly it would have been inconsistent with objectives of
the Leahy-Smith America Invents Act that the Director, in prescribing
rules for the covered business method patent reviews, consider the
effect of the rules on the economy, the integrity of the patent system,
the efficient administration of the Office, and the ability of the
Office to complete timely the instituted proceedings.
Threshold for Instituting a Review: The Office considered whether
the threshold for instituting a review could be set as low as or lower
than the threshold for ex parte reexamination. This alternative could
not be adopted in view of the statutory requirements in 35 U.S.C. 324.
Default Electronic Filing: The Office considered a paper filing
system and a mandatory electronic filing system (without any
exceptions) as alternatives to the proposed requirement that all papers
are to be electronically filed, unless otherwise authorized.
Based on the Office's experience, a paper based filing system
increases delay in processing papers, delay in public availability, and
the chance that a paper may be misplaced or made available to an
improper party if confidential. Accordingly, the alternative of a paper
based filing system would have been inconsistent with objectives of the
Leahy-Smith America Invent Act that the Director, in prescribing rules
for the covered business method patent reviews, consider the effect of
the rules on the economy, the integrity of the patent system, the
efficient administration of the Office, and the ability of the Office
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to complete timely the instituted proceedings.
An electronic filing system (without any exceptions) that is
rigidly applied would result in unnecessary cost and burdens,
particularly where a party lacks the ability to file electronically. By
contrast, if the proposed option is adopted, it is expected that the
entity size and sophistication would be considered in determining
whether alternative filing methods would be authorized.
6. Identification, to the Extent Practicable, of All Relevant
Federal Rules Which May Duplicate, Overlap, or Conflict With the
Proposed Rules:
37 CFR 1.99 provides for the submission of information after
publication of a patent application during examination by third
parties.
37 CFR 1.171-1.179 provide for applications to reissue a patent to
correct errors, including where a claim in a patent is overly broad.
37 CFR 1.291 provides for the protest against the issuance of a
patent during examination.
37 CFR 1.321 provides for the disclaimer of a claim by a patentee.
37 CFR 1.501 and 1.502 provide for ex parte reexamination of
patents. Under these rules, a person may submit to the Office prior art
consisting of patents or printed publications that are pertinent to the
patentability of any claim of a patent, and request reexamination of
any claim in the patent on the basis of the cited prior art patents or
printed publications. Consistent with 35 U.S.C. 302-307, ex parte
reexamination rules provide a different threshold for initiation,
required the proceeding to be conducted by an examiner with a right of
appeal to the Patent Trial and Appeal Board, and allow for limited
participation by third parties.
37 CFR 1.902-1.997 provide for inter partes reexamination of
patents. Similar to ex parte reexamination, inter partes reexamination
provides a procedure in which a third party may request reexamination
of any claim in a patent on the basis of the cited prior art patents
and printed publication. The inter partes reexamination practice will
be eliminated, except for requests filed before the effective date,
September 16, 2012. See § 6(c)(3)(C) of the Leahy-Smith America
Invents Act.
Other countries have their own patent laws, and an entity desiring
a patent in a particular country must make an application for patent in
that country, in accordance with the applicable law. Although the
potential for overlap exists internationally, this cannot be avoided
except by treaty (such as the Paris Convention for the Protection of
Industrial Property, or the Patent Cooperation Treaty (PCT)).
Nevertheless, the Office believes that there are no other duplicative
or overlapping foreign rules.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be significant for purposes of
Executive Order 12866 (Sept. 30, 1993), as amended by Executive Order
13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007).
Based on the petition and other filing requirements for initiating
a review proceeding, the USPTO estimates the burden of the proposed
rules on the public to be $22,761,410 in fiscal year 2013, which
represents the sum of the estimated total annual (hour) respondent cost
burden ($20,405,610) plus the estimated total annual non-hour
respondent cost burden ($2,355,800) provided in Part O, Section II, of
this notice, infra.
The USPTO expect several benefits to flow from the Leahy-Smith
America Invents Act and these proposed rules. It is anticipated that
the proposed rules will reduce the time for reviewing patents at the
USPTO. Specifically, 35 U.S.C. 326(a) provides that the Director
prescribe regulations requiring a final determination by the Board
within one year of initiation, which may be extended for up to six
months for good cause. In contrast, currently for inter partes
reexamination, the average time from the filing to the publication of a
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certificate ranged from 28.9 to 41.7 months during fiscal years 2009-
2011. See Reexaminations - FY 2011, http://www.uspto.gov/patents/
Reexamination_operational_statistic_through_FY2011Q4.pdf.
Likewise, it is anticipated that the proposed rules will minimize
duplication of efforts. In particular, the Leahy-Smith America Invents
Act provides more coordination between district court infringement
litigation and covered business method patent review to reduce
duplication of efforts and costs.
The AIPLA Report of the Economic Survey 2011 reports that the total
cost of patent litigation where the damages at risk are less than
$1,000,000 average $916,000, where the damages at risk are between
$1,000,000 and $25,000,000 average $2,769,000, and where the damages at
risk exceed $25,000,000 average $6,018,000. There may be a significant
reduction in overall burden if, as intended, the Leahy-Smith America
Invents Act and the proposed rules reduce the overlap between review at
the USPTO of issued patents and validity determination during patent
infringement actions. Data from the United States district courts
reveals that 2,830 patent cases were filed in 2006, 2,896 in 2007,
2,909 in 2008, 2,792 in 2009, and 3,301 in 2010. See U.S. Courts,
Judicial Business of the United States Courts, www.uscourts.gov/uscourts/
Statistics/JudicialBusiness/2010/appendices/C02ASep10.pdf
(last visited Nov. 11, 2011) (hosting annual reports for 1997 through
2010). Thus, the Office estimates that no more than 3,300 (the highest
number of yearly filings between 2006 and 2010 rounded to the nearest
100) patent cases are likely to be filed annually. The aggregate burden
estimate above ($22,761,410) was not offset by a reduction in burden
based on improved coordination between district court patent litigation
and the new inter partes review proceedings.
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on
society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector, and the public as a whole,
and provided online access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
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H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of Executive
Order 12988 (Feb. 5, 1996). This rulemaking carries out a statute
designed to lessen litigation. See H.R. Rep. No. 112-98, at 45-48.
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not effect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801-808), prior to issuing any final rule, the United
States Patent and Trademark Office will submit a report containing the
final rule and other required information to the U.S. Senate, the U.S.
House of Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this notice are not expected to
result in an annual effect on the economy of 100 million dollars or
more, a major increase in costs or prices, or significant adverse
effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign based enterprises in domestic and export markets.
Therefore, this notice is not expected to result in a "major rule" as
defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes proposed in
this notice do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501-1571.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321-4370h.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995
(44 U.S.C. 3501-3549) requires that the USPTO consider the impact of
paperwork and other information collection burdens imposed on the
public. This proposed rulemaking involves information collection
requirements which are subject to review by the Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C.
3501-3549). The collection of information involved in this notice has
been submitted to OMB under OMB control number 0651-00xx. In the Notice
"Rules of Practice for Trials before the Patent Trial and Appeal Board
and Judicial Review of Patent Trial and Appeal Board Decisions," RIN
0651-AC70, the information collection for all of the new trials
authorized by the Leahy-Smith America Invents Act were provided. In the
Notice "Changes to Implement Transitional Program for Covered Business
Method Patents," RIN 0651-AC73, the information collection for covered
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business methods authorized by the Leahy-Smith America Invents Act were
provided. This notice also provides the subset of burden created by the
covered business method patent review provisions. The proposed
collection will be available at the OMB's Information Collection Review
Web site (www.reginfo.gov/public/do/PRAMain).
The USPTO is submitting the information collection to OMB for its
review and approval because this notice of proposed rulemaking will add
the following to a collection of information:
(1) Petitions to institute a covered business method patent review
(§§ 42.5, 42.6, 42.8, 42.11, 42.13, 42.20, 42.21, 42.22,
42.24(a)(3), 42.63, 42.65, 42.203, 42.205, and 42.302 through 42.304);
(2) motions (§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.22,
42.24(a)(5), 42.51 through 42.54, 42.63, 42.64, 42.65, 42.221, 42.123,
and 42.223);
(3) oppositions (§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.23,
42.24(b), 42.51, 42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.207, and
42.220);
(4) replies provided for in 35 U.S.C. 321-329 (§§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.23, 42.24(c), 42.51, 42.52, 42.53, 42.54,
42.63, and 42.65).
The proposed rules also permit filing requests for oral argument
(§ 42.70) provided for in 35 U.S.C. 326(a)(10), requests for
rehearing (§ 42.71(c)), requests for adverse judgment (§ 42.73(b)),
and requests that a settlement be treated as business
confidential (§ 42.74(b)) provided for in 35 U.S.C. 327.
I. Abstract: The USPTO is required by 35 U.S.C. 131 and 151 to
examine applications and, when appropriate, issue applications as
patents.
Chapter 32 of title 35 U.S.C. in effect on September 16, 2012,
provides for post-grant review proceedings allowing third parties to
petition the USPTO to review the patentability of an issued patent
under any ground authorized under 35 U.S.C. 282(b)(2). If a trial is
initiated by the USPTO based on the petition, as authorized by the
USPTO, additional motions may be filed by the petitioner. A patent
owner may file a response to the petition and if a trial is instituted,
as authorized by the USPTO, may file additional motions.
Section 18 of the Leahy-Smith America Invents Act provides for a
transitional program for covered business method patents which will
employ the standards and procedures of the post-grant review proceeding
with a few exceptions.
In estimating the number of hours necessary for preparing a
petition to institute a covered business method patent review, the
USPTO considered the estimated cost of preparing a request for inter
partes reexamination ($46,000), the median billing rate ($340/hour),
and the observation that the cost of inter partes reexamination has
risen the fastest of all litigation costs since 2009 in the AIPLA
Report of the Economic Survey 2011. Since additional grounds are
provided in covered business method patent review, the Office estimates
the cost of preparing a petition to institute a review will be 33.333%
more than the estimated cost of preparing a request for inter partes
reexamination, or $61,333.
In estimating the number of hours necessary for preparing motions
after instituting and participating in the review, the USPTO considered
the AIPLA Report of the Economic Survey 2011 which reported the average
cost of a party to a two-party interference to the end of the
preliminary motion phase ($322,000) and inclusive of all costs
($631,000). The Office considered that the preliminary motion phase is
a good proxy for patentability reviews since that is the period of
current contested cases before the trial section of the Board where
most patentability motions are currently filed.
The USPTO also reviewed recent contested cases before the trial
section of the Board to make estimates on the
average number of motions for any matter including priority, the subset
of those motions directed to non-priority issues, the subset of those
motions directed to non-priority patentability issues, and the subset
of those motions directed to patentability issues based on a patent or
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printed publication on the basis of 35 U.S.C. 102 or 103. The review of
current contested cases before the trial section of the Board indicated
that approximately 15% of motions were directed to prior art grounds,
18% of motions were directed to other patentability grounds, 27% were
directed to miscellaneous issues and, 40% were directed to priority
issues. It was estimated that the cost per motion to a party in current
contested cases before the trial section of the Board declines because
of overlap in subject matter, expert overlap, and familiarity with the
technical subject matter. Given the overlap of subject matter, a
proceeding with fewer motions will have a somewhat less than
proportional decrease in costs since the overlapping costs will be
spread over fewer motions.
It is estimated that the cost of an inter partes review would be
60% of the cost of current contested cases before the trial section of
the Board to the end of the preliminary motion period. An inter partes
review should have many fewer motions since only one party will have a
patent that is the subject of the proceeding (compared with each party
having at least a patent or an application in current contested cases
before the trial section of the Board). Moreover, fewer issues can be
raised since inter partes review will not have priority-related issues
that must be addressed in current contested cases before the trial
section of the Board. Consequently, a 60% weighting factor should
capture the typical costs of an inter partes review.
It is estimated that the cost of a covered business method patent
review would be 75% of the cost of current contested cases before the
trial section of the Board to the end of the preliminary motion period.
A covered business method patent review should have many fewer motions
since only one party will have a patent that is the subject of the
proceeding (compared with each party having at least a patent or an
application in current contested cases before the trial section of the
Board). Moreover, fewer issues can be raised since covered business
method patent reviews will not have the priority-related issues that
must be addressed in current contested cases before the trial section
of the Board before the priority phase. Again, a 75% weighting factor
should capture the typical costs of a covered business method patent
review.
The title, description, and respondent description of the
information collection are shown below with an estimate of the annual
reporting burdens for the covered business method patent review
provisions. Included in this estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information. The principal impact of
the proposed changes in this notice of proposed rulemaking is to
implement the changes to Office practice necessitated by §§ 6(d) and
18 of the Leahy-Smith America Invents Act.
The public uses this information collection to request review and
derivation proceedings and to ensure that the associated fees and
documentation are submitted to the USPTO.
II. Data
Needs and Uses: The information supplied to the USPTO by a petition
to institute a review as well as the motions authorized following the
institution is used by the USPTO to determine whether to initiate a
review under 35 U.S.C. 324 and to prepare a final decision under 35
U.S.C. 328.
OMB Number: 0651-00xx.
Title: Patent Review and Derivation Proceedings.
Form Numbers: None.
Type of Review: New Collection.
Likely Respondents/Affected Public: Individuals or households,
businesses or other for profit, not-for-profit institutions, farms,
Federal Government, and state, local, or tribal governments.
Estimated Number of Respondents/Frequency of Collection: 100
respondents and 515 responses per year.
Estimated Time per Response: The USPTO estimates that it will take
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the public from 0.1 to 180.4 hours to gather the necessary information,
prepare the documents, and submit the information to the USPTO.
Estimated Total Annual Respondent Burden Hours: 60,016.5 hours per
year.
Estimated Total Annual (hour) Respondent Cost Burden: $20,405,610
per year. The USPTO expects that the information in this collection
will be prepared by attorneys. Using the professional rate of $340 per
hour for attorneys in private firms, the USPTO estimates that the
respondent cost burden for this collection will be approximately
$20,405,610 per year (60,016.5 hours per year multiplied by $340 per
hour).
Estimated Total Annual Non-hour Respondent Cost Burden: $2,355,800
per year. There are no capital start-up or maintenance costs associated
with this information collection. However, this collection does have
annual (non-hour) costs in the form of filing fees. There are filing
fees associated with petitions for covered business method patent
review and for requests to treat a settlement as business confidential.
The total fees for this collection are calculated in the accompanying
table. The USPTO estimates that the total fees associated with this
collection will be approximately $2,355,800 per year.
Therefore, the total estimated cost burden in fiscal year 2013 is
estimated to be $22,761,410 (the sum of the estimated total annual
(hour) respondent cost burden ($20,405,610) plus the estimated total
annual non-hour respondent cost burden ($2,355,800)).
Estimated Estimated
time for Estimated annual
response annual burden
Item (hours) responses hours
Petition for covered business 180.4 50 9,020
method patent review
Reply to initial covered 100 45 4,500
business method patent
review
Request for Reconsideration 80 14 1,120
Motions, replies and 130 342 44,460
oppositions after
institution in covered
business method patent review
Request for oral hearing 20 45 900
Request to treat a settlement 2 2 4
as business confidential
Request for adverse judgment, 1 10 10
default adverse judgment
or settlement 1 2 2
agreement available
Notice of judicial review of a 0.1 5 0.5
Board decision (e.g., notice
of appeal under 35 U.S.C. 142)
Totals 515 60,016.5
Estimated
Estimated annual
annual filing
Item responses Fee Amount costs
Petition for covered business 50 $47,100 $2,355,000
method patent review
Reply to covered business 45 0 0
method patent review
petition
Request for Reconsideration 14 0 0
Motions, replies and 342 0 0
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oppositions after
initiation in covered
business method patent
review
Request for oral hearing 45 0 0
Request to treat a settlement 2 0 0
as business confidential
Request for adverse judgment, 10 0 0
default adverse judgment
or settlement
Request to make a settlement 2 400 800
agreement available
Notice of judicial review of 5 0 0
a Board decision (e.g.,
notice of appeal under
35 U.S.C. 142)
Totals 515 2,355,800
III. Solicitation
The agency is soliciting comments to: (1) Evaluate whether the
proposed information requirement is necessary for the proper
performance of the functions of the agency, including whether the
information will have practical utility; (2) evaluate the accuracy of
the agency's estimate of the burden; (3) enhance the quality, utility,
and clarity of the information to be collected; and (4) minimize the
burden of collecting the information on those who are to respond,
including by using appropriate automated, electronic, mechanical, or
other technological collection techniques or other forms of information
technology.
Interested persons are requested to send comments regarding this
information collection by April 10, 2012 to: (1) The Office of
Information and Regulatory Affairs, Office of Management and Budget,
New Executive Office Building, Room 10202, 725 17th Street NW.,
Washington, DC 20503, Attention: Nicholas A. Fraser, Desk Officer for
the United States Patent and Trademark Office, and via email at
nfraser@omb.eop.gov; and (2) The Board of Patent Appeals and
Interferences by electronic mail message over the Internet addressed
to: TPCBMP_Definition@uspto.gov, or by mail addressed to: Mail Stop
Patent Board, Director of the United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of "Lead Judge Michael Tierney, Covered Business Method
Patent Review Proposed Definition for Technological Invention."
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 42
Administrative practice and procedure, Inventions and patents,
Lawyers.
Proposed Amendments to the Regulatory Text
For the reasons stated in the preamble, the Under Secretary of
Commerce for Intellectual Property and Director of the United States
Patent and Trademark Office propose to amend 37 CFR part 42 as proposed
to be added in the February 9, 2012, issue of the Federal Register as
follows:
PART 42 - TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
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1. The authority citation for 37 CFR part 42 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312,
316, 321-326 and Leahy-Smith America Invents Act, Pub. L. 112-29,
§§ 6(c), 6(f), and 18, 125 Stat. 284, 304, 311, and 329
(2011).
2. Add § 42.301 to subpart D to read as follows:
§ 42.301 Definitions.
In addition to the definitions in § 42.2, the following
definitions apply to proceedings under this subpart D:
(a) Covered business method patent means a patent that claims a
method or corresponding apparatus for performing data processing or
other operations used in the practice, administration, or management of
a financial product or service, except that the term does not include
patents for technological inventions.
(b) Technological invention. In determining whether a patent is for
a technological invention solely for purposes of the Transitional
Program for Covered Business Methods (section 42.301(a)), the following
will be considered on a case-by-case basis: whether the claimed subject
matter as a whole recites a technological feature that is novel and
unobvious over the prior art; and solves a technical problem using a
technical solution.
January 31, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
| Changes to Implement Derivation Proceedings |
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 42
[Docket No. PTO-P-2011-0086]
RIN 0651-AC74
Changes To Implement Derivation Proceedings
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office or
USPTO) proposes new rules to implement the provisions of the Leahy-
Smith America Invents Act that create a new derivation proceeding to be
conducted before the Patent Trial and Appeal Board (Board). These
provisions of the Leahy-Smith America Invents Act will take effect on
March 16, 2013, eighteen months after the date of enactment, and apply
to applications for patent, and any patent issuing thereon, that are
subject to first-inventor-to-file provisions of the Leahy-Smith America
Invents Act.
DATES: The Office solicits comments from the public on this proposed
rulemaking. Written comments must be received on or before April 10,
2012 to ensure consideration.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: derivation@uspto.gov. Comments may also be
submitted by postal mail addressed to: Mail Stop Patent Board, Director
of the United States Patent and Trademark Office, P.O. Box 1450,
Alexandria, VA 22313-1450, marked to the attention of "Lead Judge
Michael Tierney, Derivation Proposed Rules."
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov/) for additional
instructions on providing comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments are preferred to be submitted in
plain text, but also may be submitted in ADOBE® portable document
format or MICROSOFT WORD® format. Comments not submitted
electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE® portable
document format.
The comments will be available for public inspection at the Board
of Patent Appeals and Interferences, currently located in Madison East,
Ninth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also
will be available for viewing via the Office's Internet Web site
(http://www.uspto.gov/). Because comments will be made available for
public inspection, information that the submitter does not desire to
make public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Michael Tierney, Lead Administrative
Patent Judge, Richard Torczon, Administrative Patent Judge, Sally Lane,
Administrative Patent Judge, and Sally Medley, Administrative Patent
Judge, Board of Patent Appeals and Interferences, by telephone at (571)
272-9797.
SUPPLEMENTARY INFORMATION: On September 16, 2011, the Leahy-Smith
America Invents Act was enacted into law (Pub. L. 112-29, 125 Stat. 284
(2011)). The purpose of the Leahy-Smith America Invents Act and these
proposed regulations is to establish a more efficient and streamlined
patent system. The preamble of this notice sets forth in detail the
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procedures by which the Board will conduct a new administrative
proceeding called a derivation proceeding. Derivation proceedings were
created to ensure that the first person to file the application is
actually a true inventor. This new proceeding will ensure that a person
will not be able to obtain a patent for the invention that he did not
actually invent. If a dispute arises as to which of two applicants is a
true inventor (as opposed to who invented it first), it will be
resolved through derivation proceeding by the Board. The USPTO is
engaged in a transparent process to create the procedures for
derivation proceedings. The proposed rules would provide a set of rules
relating to Board trial practice for derivation proceedings.
Section 3(i) of the Leahy-Smith America Invents Act amends 35
U.S.C. 135 to provide for derivation proceedings and to eliminate the
interference practice as to applications and patents having an
effective filing date on or after March 16, 2013 (with a few
exceptions). Derivation proceedings will be conducted in a manner
similar to inter partes reviews and post-grant reviews. Unlike patent
interferences, derivations will be conducted in a single phase without
the use of a "count." An inventor seeking a derivation proceeding
must file an application. 35 U.S.C. 135(a). An inventor, however, may
copy an alleged deriver's application, make any necessary changes to
reflect accurately what the inventor invented, and provoke a derivation
proceeding by the timely filing of a petition and fee.
In particular, 35 U.S.C. 135(a), as amended, will provide that an
applicant for patent may file a petition to institute a derivation
proceeding in the Office. 35 U.S.C. 135(a), as amended, will provide
that the petition must state with particularity the basis for finding
that a named inventor in the earlier application derived the claimed
invention from an inventor named in the petitioner's application and,
without authorization, filed the earlier application. 35 U.S.C. 135(a),
as amended, also will provide that the petition must be filed within
one year of the first publication by the earlier applicant of a claim
to the same or substantially the same invention, made under oath, and
be supported by substantial evidence. 35 U.S.C. 135(a), as amended,
will also provide that if the Director determines that the petition
demonstrates that the standards for instituting a derivation proceeding
are met, the Director may institute a derivation proceeding and that
the determination of whether to initiate a derivation proceeding is
final and nonappealable. A derivation is unlikely to be declared even
where the Director thinks the standard for instituting a derivation
proceeding is met if the petitioner's claim is not otherwise in
condition for allowance. Cf. Brenner v. Manson, 383 U.S. 519, 528 n.12
(1966); accord Ewing v. Fowler Car Co., 244 U.S. 1, 7 (1917).
35 U.S.C. 135(b), as amended, will provide that, once a derivation
proceeding is initiated, the Patent Trial and Appeal Board will
determine whether a named inventor in the earlier application derived
the claimed invention from a named inventor in the petitioner's
application and, without authorization, filed the earlier application.
35 U.S.C. 135(b), as amended, will also provide that the Patent and
Trial and Appeal Board may correct the naming of the inventor of any
application or patent at issue in appropriate circumstances, and that
the Director will prescribe regulations for the conduct of derivation
proceedings, including requiring parties to provide sufficient evidence
to prove and rebut a claim of derivation.
35 U.S.C. 135(c), as amended, will provide that the Patent Trial
and Appeal Board may defer action on a petition for derivation
proceeding for up to three months after a patent is issued from the
earlier application that includes a claim that is the subject of the
petition. 35 U.S.C. 135(c), as amended, will further provide that the
Patent Trial and Appeal Board also may defer action on a petition for a
derivation proceeding or stay the proceeding after it has been
initiated until the termination of a proceedings under chapter 30, 31,
or 32 involving the patent of the earlier applicant.
35 U.S.C. 135(d), as amended, will provide that a decision that is
adverse to claims in an application constitutes the final refusal of
the claims by the Office, while a decision adverse to claims in a
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patent constitutes cancellation of the claims, if no appeal or other
review of the decision has been taken or had. 35 U.S.C. 135(d), as
amended, will provide that a notice of cancellation must be endorsed on
copies of the patent distributed after the cancellation.
Section 3(i) of the Leahy-Smith America Invents Act further adds
two new provisions, 35 U.S.C. 135(e) and (f). In particular, new
paragraph (e) will provide that the parties to a derivation proceeding
may terminate the proceeding by filing a written statement reflecting
the agreement of the parties as to the correct inventors of the claimed
invention in dispute. 35 U.S.C. 135(e) will provide that the Patent
Trial and Appeal Board must take action consistent with the agreement,
unless the Board finds the agreement to be inconsistent with the
evidence of record. 35 U.S.C. 135(e) will further provide that the
written settlement or understanding of the parties must be filed with
the Director and, at the request of a party, will be treated as
business confidential information, will be kept separate from the file
of the involved patents or applications, and will be made available
only to Government agencies on written request, or to any person on a
showing of good cause.
New paragraph (f) of 35 U.S.C. 135 will allow the parties to a
derivation proceeding to determine the contest, or
any aspect thereof, by arbitration within a time specified by the
Director, and will provide that the arbitration is governed by the
provisions of title 9, to the extent that title is not inconsistent
with 35 U.S.C. 135. 35 U.S.C. 135(f) will also provide that the parties
must give notice of any arbitration award to the Director, that the
award is not enforceable until such notice is given, and that the
award, as between the parties to the arbitration, is dispositive of the
issues to which it relates but does not preclude the Director from
determining the patentability of the claimed inventions involved in the
proceeding. The Director will delegate to the Board authority to
resolve patentability issues that arise during derivation proceedings
when there is good cause to do so.
Discussion of Specific Rules
This notice proposes new rules to implement the provisions of the
Leahy-Smith America Invents Act for instituting and conducting
derivation proceedings before the Patent Trial and Appeal Board
(Board). 35 U.S.C. 135(b), as amended, will provide that the Director
will prescribe regulations setting forth standards for the conduct of
derivation proceedings. This notice proposes to add a new subpart E to
37 CFR part 42 to provide rules specific to derivation proceedings.
Additionally, the Office in a separate rulemaking is proposing to
add part 42, including subpart A, (RIN 0651-AC70) that would include a
consolidated set of rules relating to Board trial practice. More
specifically, the proposed subpart A of part 42 would set forth the
policies, practices, and definitions common to all trial proceedings
before the Board. The proposed rules in the instant notice and
discussion below may reference the proposed rules in subpart A of part
42. Furthermore, the Office in separate rulemakings proposes to add a
new subpart B to 37 CFR part 42 (RIN 0651-AC71) to provide rules
specific to inter partes review, a new subpart C to 37 CFR part 42 (RIN
0651-AC72) to provide rules specific to post-grant review, and a new
subpart D to 37 CFR part 42 (RIN 0651-AC73; RIN 0651-AC75) to provide
rules specific to transitional program covered business method patents.
Title 37 of the Code of Federal Regulations, Chapter I, Part 42,
Subpart E, entitled "Derivation" is proposed to be added as follows:
Section 42.400: Proposed § 42.400 would set forth policy
considerations for derivation proceedings.
Proposed § 42.400(a) would provide that a derivation proceeding
is a trial and subject to the rules set forth in subpart A.
Proposed § 42.400(b) would delegate to the Board the Director's
authority to resolve patentability issues when there is good cause to
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do so. See the last sentence of 35 U.S.C. 135(f), as amended. For
example, an issue of claim indefiniteness (35 U.S.C. 112) might need to
be resolved before derivation can be substantively addressed on the
merits. Resolution of such issues promotes procedural efficiency, and
may even encourage party settlement, by providing clear guidance on the
scope of the contested issues.
Section 42.401: Proposed § 42.401 would set forth definitions
specific to derivation proceedings, in addition to definitions set
forth in § 42.2 of this part.
Definitions proposed:
Agreement or understanding under 35 U.S.C. 135(e): The proposed
definition would reflect the terminology used in 35 U.S.C. 135(e), as
amended, to describe a settlement between parties to a derivation
proceeding.
Applicant: The proposed definition would make it clear that reissue
applicants are considered applicants, and not patentees, for purposes
of a derivation proceeding.
Application: The proposed definition would make it clear that a
reissue application is an application, not a patent, for purposes of a
derivation proceeding. Specifically, the proposed definition includes
both an application for an original patent and an application for a
reissued patent.
Petitioner: The proposed definition of petitioner incorporates the
statutory requirement (35 U.S.C. 135(a), as amended) that the
petitioner be an applicant.
Respondent: The proposed definition of respondent identifies the
respondent as the party other than the petitioner.
Section 42.402: Proposed § 42.402 would provide who may file a
petition for a derivation proceeding.
Section 42.403: Proposed § 42.403 would provide that a petition
for a derivation proceeding must be filed within one year after the
first publication of a claim to an invention that is the same or
substantially the same as the respondent's earlier application's claim
to the invention. Such publication may be the publication by the USPTO
of an application for patent or patent or by the World Intellectual
Property Organization of an international application designating the
United States. 35 U.S.C. 135(a), as amended, will provide that a
petition for instituting a derivation proceeding may only be filed
within the one-year period of the first publication to a claim to an
invention that is the same or substantially the same as the earlier
application's claim to the invention. The proposed rule is consistent
with 35 U.S.C. 135(a), as amended, because the earlier application's
first publication of the allegedly derived invention triggers the one-
year bar date. While the statute's use of the phrase "a claim" is
ambiguous inasmuch as it could include the petitioner's claim as a
trigger, such a broad construction could violate due process. For
example, the petitioner could be barred by publication of its own claim
before it had any knowledge of the respondent's application. Such
problems may be avoided if the trigger for the deadline is publication
of the respondent's claim.
Section 42.404: Proposed § 42.404 would provide that a fee must
accompany the petition for a derivation proceeding and that no filing
date will be accorded until payment is complete.
Section 42.405: Proposed § 42.405 would identify the content of
a petition to institute a derivation proceeding. The proposed rule is
consistent with 35 U.S.C. 135(b), as amended, which will allow the
Director to prescribe regulations setting forth standards for the
conduct of derivation proceedings, including requiring parties to
provide sufficient evidence to prove and rebut a claim of derivation.
Proposed § 42.405(a) would require a petition to demonstrate
that the petitioner has standing. To establish standing, a petitioner,
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at a minimum, must timely file a petition that demonstrates that the
named inventor on the earlier filed application derived the claimed
invention and filed the earlier application without authorization from
the petitioner. This proposed requirement attempts to ensure that a
party has standing to file the petition and would help prevent
spuriously instituted derivation proceedings. This proposed rule also
ensures that the petitioner has taken steps to obtain patent protection
for the same or substantially same invention, thus promoting the useful
arts. Facially improper standing would be a basis for denying the
petition without proceeding to the merits of the decision.
Proposed § 42.405(b) would require that the petition identify
the precise relief requested. The petition must provide sufficient
information to identify the application or patent subject to a
derivation proceeding. The petition must also demonstrate that the
claimed invention in the subject application or patent was derived from
an inventor named in the petitioner's application and, without
authorization, the earliest application claiming such invention was
filed. The petitioner must further show why the claim is not patentably
distinct from the invention disclosed to the respondent. For each of
the respondent's targeted claims, the petitioner must likewise identify
how the claim to the allegedly derived invention is to be construed.
Where the claim to be construed contains a means-plus-function or step-
plus-function limitation as permited under 35 U.S.C. 112, sixth
paragraph, the construction of the claim must identify the specific
portions of the specification that describe the structure, material, or
acts corresponding to each claimed function. The proposed rule would
provide an efficient means for identifying the legal and factual basis
supporting a prima facie case of relief and would provide the opponent
with a minimum level of notice as to the basis for the allegations of
derivation.
Proposed § 42.405(c) would provide that a derivation showing is
not sufficient unless it is supported by substantial evidence and at
least one affidavit addressing communication and lack of authorization,
consistent with 35 U.S.C. 135(a), as amended. The showing of
communication must be corroborated.
Section 42.406: Proposed § 42.406 would provide requirements
for the service of a petition in addition to the requirements set forth
in § 42.6(e).
Proposed § 42.406(a) would require that the petitioner serve
the respondent at the correspondence address of record. Petition may
also attempt service at any other address known to the petitioner as
likely to effect service. Once a patent has issued, communications
between the Office and the patent owner often suffer. Ray v. Lehman, 55
F.3d 606 (Fed. Cir. 1995) (patentee's failure to maintain
correspondence address contributed to failure to pay maintenance fee
and therefore expiration of the patent). While the proposed rule
requires service at the correspondence address of record, in many
cases, the petitioner will already be in communication with the owner
of the earlier application at a better service address than the
official correspondence address.
Proposed § 42.406(b) would address the situation where delivery
to an earlier application's correspondence address does not result in
actual service. When the petitioner becomes aware of a service problem,
it would be required to promptly advise the Board of the problem. The
Board may authorize other forms of service, such as service by
publication in the Official Gazette of the United States Patent and
Trademark Office. Cf. 37 CFR 1.47(c) (notice by publication).
Section 42.407: Proposed § 42.407(a) would provide requirements
for a complete petition. 35 U.S.C. 135(b), as amended, will provide
that the Director establish regulations concerning the standards for
the conduct of derivation proceedings. 35 U.S.C. 135(a), as amended,
will provide that a derivation proceeding may be instituted where the
Director determines that a petition demonstrates that the standards for
instituting a derivation proceeding are met. Consistent with statute,
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the proposed rule would require that a complete petition be filed along
with the fee and that it be served at the correspondence address of
record for the earlier application.
Proposed § 42.407(b) would provide petitioners a one month time
frame to correct defective requests to institute a derivation
proceeding, unless the statutory deadline in which to file a petition
for derivation has expired. In determining whether to grant a filing
date, the Board would review the requests for procedural compliance.
Where a procedural defect is noted, e.g., failure to state the claims
being challenged, the Board would notify the petitioner that the
request was incomplete and identify any non-compliance issues.
Section 42.408: Proposed § 42.408 would provide that an
administrative patent judge institutes and may reinstitute a derivation
proceeding on behalf of the Director.
Section 42.409: Proposed § 42.409 would make it clear that an
agreement or understanding filed under 35 U.S.C. 135(e) would be a
settlement agreement for purposes of § 42.74.
Section 42.410: Proposed § 42.410 would provide for arbitration
of derivation proceedings. Proposed § 42.410(a) will provide that
parties to a derivation proceeding may determine such contest, or any
aspect thereof, by arbitration, except that nothing shall preclude the
Office from determining the patentability of the claimed inventions
involved in the proceeding. The proposed rule is consistent with 35
U.S.C. 135(f) because it would permit arbitration but would not
preclude the Office from independently determining issues of
patentability during the course of the proceeding. Proposed §
42.410(b) provides that the Board will not set a time for, or otherwise
modify the proceeding for, an arbitration unless the listed procedural
requirements are met.
Section 42.411: Proposed § 42.411 would provide that an
administrative patent judge may decline to institute or continue a
derivation proceeding between an application and a patent or another
application that are commonly owned. Common ownership in a derivation
proceeding is a concern because it can lead to manipulation of the
process. The proposed rule would be stated permissively because not all
cases of overlapping ownership would be cause for concern. The cases of
principal concern involve a real party in interest with the ability to
control the conduct of more than one party.
Section 42.412: Proposed § 42.412 would provide for public
availability of Board records.
Rulemaking Considerations
A. Administrative Procedure Act (APA): This notice proposes rules
of practice concerning the procedure for requesting a derivation and
the trial process after initiation of such a review. The changes being
proposed in this notice do not change the substantive criteria of
patentability. These proposed changes involve rules of agency practice
and procedure and/or interpretive rules. See Bachow Commc'ns Inc. v.
FCC, 237 F.3d 683, 690 (DC Cir. 2001) (rules governing an application
process are procedural under the Administrative Procedure Act); Inova
Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules
for handling appeals were procedural where they did not change the
substantive standard for reviewing claims); Nat'l Org. of Veterans'
Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir.
2001) (a rule that clarifies interpretation of a statute is
interpretive).
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law), and
thirty-day advance publication is not required pursuant to 5 U.S.C.
553(d) (or any other law). See Cooper Techs. Co. v. Dudas, 536 F.3d
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1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35
U.S.C. 2(b)(2)(B), does not require notice and comment rulemaking for
"interpretative rules, general statements of policy, or rules of
agency organization, procedure, or practice") (quoting 5 U.S.C.
553(b)(A)). The Office, however, is publishing these changes and the
Initial Regulatory Flexibility Act analysis, below, for comment as it
seeks the benefit of the public's views on the Office's proposed
implementation of these provisions of the Leahy-Smith America Invents
Act.
B. Regulatory Flexibility Act: The Office estimates that no more
than 50 petitions for derivation will be filed in fiscal year 2013.
This will be the first fiscal year in which derivation petitions will
be available.
The Office has reviewed the percentage of applications and patents
for which an interference was declared in fiscal year 2011.
Applications and patents known to be owned by a small entity represent
19.62% of applications and patents for which interference was declared
in FY 2011. Based on the assumption that the same percentage of
applications and patents owned by small entities will be involved in a
derivation proceeding, 20 small entity owned applications or patents
would be affected by derivation review of the 100 parties to the 50
derivation proceedings.
1. Description of the Reasons That Action by the Office Is Being
Considered: On September 16, 2011, the Leahy-Smith America Invents Act
was enacted into law (Pub. L. 112-29, 125 Stat. 284 (2011)). Section
3(i) of the Leahy-Smith America Invents Act amends 35 U.S.C. 135 to
provide for derivation proceedings and eliminate the interference
practice as to applications and patents that have an effective filing
date on or after March 16, 2013 (with a few exceptions). 35 U.S.C.
135(b), as amended, will require that the Director prescribe
regulations to set forth the standards for conducting derivation
proceedings, including requiring parties to provide sufficient evidence
to prove and rebut a claim of derivation.
2. Succinct Statement of the Objectives of, and Legal Basis for,
the Proposed Rules: The proposed rules seek to implement derivation
proceedings as authorized by the Leahy-Smith America Invents Act.
3. Description and Estimate of the Number of Affected Small
Entities: The Small Business Administration (SBA) small business size
standards applicable to most analyses conducted to comply with the
Regulatory Flexibility Act are set forth in 13 CFR 121.201. These
regulations generally define small businesses as those with fewer than
a specified maximum number of employees or less than a specified level
of annual receipts for the entity's industrial sector or North American
Industry Classification System (NAICS) code. As provided by the
Regulatory Flexibility Act, and after consultation with the Small
Business Administration, the Office formally adopted an alternate size
standard as the size standard for the purpose of conducting an analysis
or making a certification under the Regulatory Flexibility Act for
patent-related regulations. See Business Size Standard for Purposes of
United States Patent and Trademark Office Regulatory Flexibility
Analysis for Patent-Related Regulations, 71 FR 67109 (Nov. 20, 2006),
1313 Off. Gaz. Pat. Office 60 (Dec. 12, 2006). This alternate small
business size standard is SBA's previously established size standard
that identifies the criteria entities must meet to be entitled to pay
reduced patent fees. See 13 CFR 121.802. If patent applicants identify
themselves on a patent application as qualifying for reduced patent
fees, the Office captures this data in the Patent Application Location
and Monitoring (PALM) database system, which tracks information on each
patent application submitted to the Office.
Unlike the SBA small business size standards set forth in 13 CFR
121.201, the size standard for USPTO is not industry-specific. The
Office's definition of a small business concern for Regulatory
Flexibility Act purposes is a business or other concern that: (1) Meets
the SBA's definition of a "business concern or concern" set forth in
13 CFR 121.105; and (2) meets the size standards set forth in 13 CFR
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121.802 for the purpose of paying reduced patent fees, namely an
entity: (a) Whose number of employees, including affiliates, does not
exceed 500 persons; and (b) which has not assigned, granted, conveyed,
or licensed (and is under no obligation to do so) any rights in the
invention to any person who made it and could not be classified as an
independent inventor, or to any concern which would not qualify as a
non-profit organization or a small business concern under this
definition. See Business Size Standard for Purposes of United States
Patent and Trademark Office Regulatory Flexibility Analysis for Patent-
Related Regulations, 71 FR at 67112 (Nov 20, 2006), 1313 Off. Gaz. Pat.
Office at 63 (Dec. 12, 2006).
As discussed above, it is anticipated that 50 petitions for
derivation will be filed in fiscal year 2013. The Office has reviewed
the percentage of applications and patents for which an interference
was declared in fiscal year 2011. Applications and patents known to be
owned by a small entity represent 19.62% of applications and patents
for which interference was declared in FY 2011. Based on the assumption
that the same percentage of applications and patents owned by small
entities will be involved in a derivation proceeding, 20 small entity
owned applications or patents would be affected by derivation
proceeding.
The Office predicts that it will institute 10 derivation
proceedings based on petitions seeking derivation filed in fiscal year
2013. This estimate is based on the low number of interference
proceedings declared as well as the limited number of eligible
applications.
During fiscal year 2011, the Office issued 21 decisions following a
request for reconsideration of a decision on appeal in inter partes
reexamination. The average time from original decision to decision on
reconsideration was 4.4 months. Thus, the decisions on reconsideration
were based on original decisions issued from July 2010 until June 2011.
During this time period, the Office mailed 63 decisions on appeals in
inter partes reexamination. See BPAI Statistics - Receipts and
Dispositions by Technology Center, http://www.uspto.gov/ip/boards/bpai/
stats/receipts/index.jsp (monthly data). Based on the assumption that
the same rate of reconsideration (21 divided by 63 or 33.3%) will
occur, the Office estimates that 2 requests for reconsideration will be
filed. Based on the percentage of small entity owned patent
applications or patents that were the subject of an interference
declared in fiscal year 2010 (19.62%) it is estimated that 1 small
entity will file a request for a reconsideration of a decision
dismissing the petition for derivation in fiscal year 2013.
The Office reviewed motions, oppositions, and replies in a number
of contested trial proceedings before the trial section of the Board.
The review included determining whether the motion, opposition and
reply were directed to patentability grounds and non-priority non-
patentability grounds. Based on the review, it is anticipated that
derivation proceedings will have an average of 23.4 motions,
oppositions, and replies per trial after institution. Settlement is
estimated to occur in 20% of instituted trials at various points of the
trial. In the trials that are settled, it is estimated that only 50% of
the noted motions, oppositions, and replies would be filed.
After a trial has been instituted but prior to a final written
decision, parties to a derivation proceeding may request an oral
hearing. It is anticipated that 5 requests for oral hearings will be
filed. Based on the percentage of small entity owned patent
applications or patents that were the subject of an interference
declared in fiscal year 2010 (19.62%), it is estimated that 2 small
entities will file a request for oral hearing derivation proceedings
instituted in fiscal year 2013.
Parties to a review or derivation proceeding may file requests to
treat a settlement as business confidential, request for adverse
judgment, and arbitration agreements and awards. A written request to
make a settlement agreement available may also be filed. Given the
short time period set for conducting trials, it is anticipated that
the alternative dispute resolution options will be infrequently used.
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The Office estimates that 2 requests to treat a settlement as business
confidential, 2 written requests to make a settlement agreement
available, 2 requests for adverse judgment, default adverse judgment,
or settlement notices and 2 arbitration agreements and awards will be
filed. Based on the percentage of small entity owned patent
applications or patents that were the subject of an interference
declared in fiscal year 2010 (19.62%), it is estimated that 1 small
entity will file a request to treat a settlement as business
confidential, 1 small entity will file a request for adverse judgment,
default adverse judgment notice, or settlement notice, and 1 small
entity will file an arbitration agreement and award in the derivation
proceedings instituted in fiscal year 2013.
Parties to a derivation proceeding may seek judicial review of the
final decision of the Board. The Office projects that no more than 5
derivation proceedings filed in fiscal year 2013 will be appealed.
Based on the percentage of small entity owned patent applications or
patents that were the subject of an interference declared in fiscal
year 2010 (19.62%), it is estimated that 2 small entities will seek
judicial review of final decisions of the Board in the derivation
proceedings instituted in fiscal year 2013.
4. Description of the Reporting, Recordkeeping, and Other
Compliance Requirements of the Proposed Rule, Including an Estimate of
the Classes of Small Entities Which Will Be Subject to the Requirement
and the Type of Professional Skills Necessary for Preparation of the
Report or Record: Based on the trends of declared contested cases in
fiscal year 2011, it is anticipated that petitions for derivation will
be filed across all technologies with approximately 16% being filed in
electrical technologies, approximately 17% in mechanical technologies,
and the remaining 67% in chemical technologies and design. A derivation
petition is likely to be filed by an entity practicing in the same or
similar field as the patent. Therefore, it is anticipated that 16% of
the petitions for review will be filed in the electronic field, 17% in
the mechanical field, and 67% in the chemical or design fields.
Preparation of the petition would require analyzing the patent
claims, locating evidence supporting arguments of communication, and
preparing the petition seeking review of the patent. The procedures for
petitions to institute a derivation proceeding are proposed in
§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.22, 42.24(a)(4), 42.63,
42.65, and 42.402 through 42.406.
The skills necessary to prepare a petition seeking a derivation
proceeding and to participate in a trial before the Patent Trial and
Appeal Board would be similar to those needed to prepare a request for
inter partes reexamination, and to represent a party in an inter partes
reexamination before the Patent Trial and Appeal Board. The level of
skill is typically possessed by a registered patent practitioner having
devoted professional time to the particular practice area, typically
under the supervision of a practitioner skilled in the particular
practice area. Where authorized by the Board, a non-registered
practitioner may be admitted pro hac vice, on a case-by-case basis
based on the facts and circumstances of the trial and party, as well as
the skill of the practitioner.
The cost of preparing a petition for inter partes review is
anticipated to be same as the cost for preparing a request for inter
partes reexamination. The American Intellectual Property Law
Association's AIPLA Report of the Economic Survey 2011 reported that
the average cost of preparing a request for inter partes reexamination
was $46,000. Based on the work required to file and prepare such
request, the Office considers the reported cost as a reasonable
estimate. Accordingly, the Office estimates that the cost of preparing
a petition for inter partes review will be $46,000.
The cost of preparing a petition for post-grant or covered business
method patent review is estimated to be 33.333% higher than the cost of
preparing a petition for inter partes review because the petition for
post-grant or covered business method patent review may seek to
institute a proceeding on additional grounds such as subject matter
eligibility. Therefore, the Office estimates that the cost of preparing
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a petition for post-grant or covered business method patent review
would be $61,333. It is expected that petitions for derivation would
have the same complexity and cost as a petition for post-grant review
because derivation proceedings raise issues of communication, which
have similar complexity to the issues that can be raised in a post-
grant review, i.e., public use and sale and written description. Thus,
the Office estimates that the cost of preparing a petition for
derivation would also be $61,333.
Following institution of a trial, the parties may be authorized to
file various motions, e.g., motions to amend and motions for additional
discovery. Where a motion is authorized, an opposition may be
authorized, and where an opposition is authorized, a reply may be
authorized. The procedures for filing a motion are proposed in
§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.22, 42.24(a)(5), 42.51,
42.52, 42.53, 42.54, 42.63, 42.64, and 42.65. The procedures for filing
an opposition are proposed in §§ 42.6, 42.8, 42.11, 42.13,
42.21, 42.23, 42.24(b), 42.51, 42.52, 42.53, 42.54, 42.63, 42.64, and
42.65. The procedures for filing a reply are proposed in §§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.23, 42.24(c), 42.51, 42.52, 42.53,
42.54, 42.63, and 42.65. As discussed previously, the Office estimates
that the average derivation proceeding is anticipated to have 23.4
motions, oppositions, and replies after institution.
The AIPLA Report of the Economic Survey 2011 reported that the
average cost in contested cases before the trial section of the Board
prior to the priority phase was $322,000 per party. Because of the
overlap of issues in patentability grounds, it is expected that the
cost per motion will decline as more motions are filed in a proceeding.
It is estimated that a motion, opposition, or reply in a derivation is
estimated at $34,000, which is estimated by dividing the total public
cost for all motions in current contested cases divided by the
estimated number of motions in derivations under 35 U.S.C. 135, as
amended. Based on the work required to file and prepare such briefs,
the Office considers the reported cost as a reasonable estimate.
After a trial has been instituted but prior to a final written
decision, parties to a review or derivation proceeding may request an
oral hearing. The procedure for filing requests for oral argument is
proposed in § 42.70. The AIPLA Report of the Economic Survey 2011
reported that the third quartile cost of an ex parte appeal with an
oral argument is $12,000, while the third quartile cost of an ex parte
appeal without an oral argument is $6,000. In view of the reported
costs, which the Office finds reasonable, and the increased complexity
of an oral hearing with multiple parties, it is estimated that the cost
per party for oral hearings would be $6,800 or $800 more than the
reported third quartile cost for an ex parte oral hearing.
Parties to a derivation proceeding may file requests to treat a
settlement as business confidential, request for adverse judgment, and
arbitration agreements and awards. A written request to make a
settlement agreement available may also be filed. The procedures to
file requests that a settlement be treated as business confidential are
proposed in §§ 42.74(c) and 42.409. The procedures to file requests for
adverse judgment are proposed in § 42.73(b). The procedures to file
arbitration agreements and awards are proposed in § 42.410. The procedures
to file requests to make a settlement agreement available are proposed in
§ 42.74(c)(2). It is anticipated that requests to treat a
settlement as business confidential will require 2 hours of
professional time or $680. It is anticipated that requests for adverse
judgment will require 1 hour of professional time or $340. It is
anticipated that arbitration agreements and awards will require 4 hours
of professional time or $1,360. It is anticipated that requests to make
a settlement agreement available will require 1 hour of professional
time or $340. The requests to make a settlement agreement available
will also require payment of a fee of $400 specified in proposed
§ 42.15(d). The fee proposed would be the same as currently set forth
in § 41.20(a) for petitions to the Chief Administrative Patent Judge.
Parties to a review proceeding may seek judicial review of the
judgment of the Board. The procedures to file notices of judicial
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review of a Board decision, including notices of appeal and notices of
election provided for in 35 U.S.C. 141, 142, 145, and 146, are proposed
in §§ 90.1 through 90.3. The submission of a copy of a notice
of appeal or a notice of election is anticipated to require 6 minutes
of professional time at a cost of $34.
5. Description of Any Significant Alternatives to the Proposed
Rules Which Accomplish the Stated Objectives of Applicable Statutes and
Which Minimize Any Significant Economic Impact of the Rules on Small
Entities:
Size of petitions and motions: The Office considered whether to
apply a page limit and what an appropriate page limit would be. The
Office does not currently have a page limit on inter partes
reexamination requests. The inter partes reexamination requests from
October 1, 2010 to June 30, 2011, averaged 246 pages. Based on the
experience of processing inter partes reexamination requests, the
Office finds that the very large size of the requests has created a
burden on the Office that hinders the efficiency and timeliness of
processing the requests, and creates a burden on patent owners. The
quarterly reported average processing time from the filing of a request
to the publication of a reexamination certificate ranged from 28.9
months to 41.7 months in fiscal year 2009, from 29.5 months to 37.6
months in fiscal year 2010, and from 31.9 to 38.0 months in fiscal year
2011. See Reexaminations - FY 2011, http://www.uspto.gov/patents/
Reexamination_operational_statistic_through_FY2011Q4.pdf.
By contrast, the Office has a page limit on the motions filed in
contested cases, except where parties are specificially authorized to
exceed the limitation. The typical contested case proceeding is subject
to a standing order that sets a 50 page limit for motions and
oppositions on priority, a 15 page limit for miscellaneous motions
(§ 41.121(a)(3)) and oppositions (§ 41.122), and a 25 page
limit for other motions (§ 41.121(a)(2)) and oppositions to other
motions. In typical proceedings, replies are subject to a 15 page limit
if directed to priority, 5 page limit for miscellaneous issue, and 10
page limit for other motions. The average contested case was terminated
in 10.1 months in fiscal year 2009, in 12 months in fiscal year 2010,
and 9 months in fiscal year 2011. The percentage of contested cases
terminated within 2 years was 93.7% in fiscal year 2009, 88.0% in
fiscal year 2010, and 94.0% in fiscal year 2011. See BPAI Statistics -
Performance Measures,
http://www.uspto.gov/ip/boards/bpai/stats/perform/index.jsp.
Comparing the average time period for terminating a contested case,
10.0 to 12.0 months, with the average time period, during fiscal years
2009 through 2011, for completing an inter partes reexamination, 28.9
to 41.7 months, indicates that the average interference takes from 24%
(10.0/41.7) to 42% (12.0/28.9) of the time of the average inter partes
reexamination. While several factors contribute to the reduction in
time, limiting the size of the requests and motions is considered a
significant factor. Proposed § 42.24 would provide page limits for
petitions, motions, oppositions, and replies.
Federal courts routinely use page limits in managing motions
practice as "[e]ffective writing is concise writing." Spaziano v.
Singletary, 36 F.3d 1028, 1031 n.2 (11th Cir. 1994). Many district
courts restrict the number of pages that may be filed in a motion
including, for example, the District of Delaware, the District of New
Jersey, the Eastern District of Texas, the Northern, Central, and
Southern Districts of California, and the Eastern District of Virginia.
Federal courts have found that page limits ease the burden on both
the parties and the courts, and patent cases are no exception. Eolas
Techs., Inc. v. Adobe Sys., Inc., No. 6:09-CV-446, at 1 (E.D. Tex.
Sept. 2, 2010) ("The Local Rules' page limits ease the burden of
motion practice on both the Court and the parties."); Blackboard, Inc.
v. Desire2Learn, Inc., 521 F. Supp. 2d 575, 576 (E.D. Tex. 2007) (The
parties "seem to share the misconception, popular in some circles,
that motion practice exists to require federal judges to shovel through
steaming mounds of pleonastic arguments in Herculean effort to uncover
a hidden gem of logic that will ineluctably compel a favorable ruling.
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Nothing could be farther from the truth."); Broadwater v. Heidtman
Steel Prods., Inc., 182 F. Supp. 2d 705, 710 (S.D. Ill. 2002)
("Counsel are strongly advised, in the future, to not ask this Court
for leave to file any memoranda (supporting or opposing dispositive
motions) longer than 15 pages. The Court has handled complicated patent
cases and employment discrimination cases in which the parties were
able to limit their briefs supporting and opposing summary judgment to
10 or 15 pages." (Emphasis omitted)).
The Board's contested cases experience with page limits in motions
practice is consistent with that of the federal courts. The Board's use
of page limits has shown it to be beneficial without being unduly
restrictive for the parties. Page limits have encouraged the parties to
focus on dispositive issues, easing the burden of motions practice on
the parties and on the Board.
The Board's contested cases experience with page limits is informed
by its use of different approaches over the years. In the early 1990s,
page limits were not routinely used for motions, and the practice
suffered from lengthy and unacceptable delays. To reduce the burden on
the parties and on the Board and thereby reduce the time to decision,
the Board instituted page limits in the late 1990s for every motion.
Page limit practice was found to be effective in reducing the burdens
on the parties and improving decision times at the Board. In 2006, the
Board revised the page limit practice and allowed unlimited findings of
fact and generally limited the number of pages containing argument. Due
to abuses of the system, the Board recently reverted back to page
limits for the entire motion (both argument and findings of fact).
The Board's current page limits are consistent with the 25 page
limits in the Northern, Central, and Southern Districts of California,
and the Middle District of Florida and exceed the limits in the
District of Delaware (20), the Northern District of Illinois (15), the
District of Massachusetts (20), the Eastern District of Michigan (20),
the Southern District of Florida (20), and the Southern District of
Illinois (20).
In a typical proceeding before the Board, a party may be authorized
to file a single motion for unpatentability based on prior art, a single
motion for unpatentability based upon failure to comply with 35 U.S.C.
112, lack of written description, and/or enablement, and potentially
another motion for lack of compliance with 35 U.S.C. 101, although a 35
U.S.C. 101 motion may be required to be combined with the 35 U.S.C. 112
motion. Each of these motions is currently limited to 25 pages in
length, unless good cause is shown that the page limits are unduly
restrictive for a particular motion.
A petition requesting the institution of a trial proceeding would
be similar to motions currently filed with the Board. Specifically,
petitions to institute a trial seek a final written decision that the
challenged claims are unpatentable, where derivation is a form of
unpatentability. Accordingly, a petition to institute a trial based on
prior art would, under current practice, be limited to 25 pages, and by
consequence, a petition raising unpatentability based on prior art and
unpatentability under 35 U.S.C. 101 and/or 112 would be limited to 50
pages.
Petitions to institute derivation proceedings, while distinct from
interference practice, raise similar issues to those that may be raised
in interferences in a motion for judgment on priority of invention.
Currently, motions for judgment on priority of invention, including
issues such as conception, corroboration, and diligence, are generally
limited to 50 pages. Thus, the proposed 50 page limit is considered
sufficient in all but exceptional cases.
The proposed rule would provide that petitions to institute a trial
must comply with the stated page limits, but may be accompanied by a
motion that seeks to waive the page limits. The petitioner must show in
the motion how a waiver of the page limits is in the interests of
justice. A copy of the desired non-page limited petition must accompany
the motion. Generally, the Board would decide the motion prior to
deciding whether to institute the trial.
Current Board practice provides a limit of 25 pages for other
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motions and 15 pages for miscellaneous motions. The Board's experience
is that such page limits are sufficient for the parties filing them and
do not unduly burden the opposing party or the Board. Petitions to
institute a trial would generally replace the current practice of
filing motions for unpatentability, as most motions for relief are
expected to be similar to the current contested cases miscellaneous
motion practice. Accordingly, the proposed 15 page limit is considered
sufficient for most motions but may be adjusted where the limit is
determined to be unduly restrictive for the relief requested.
Proposed § 42.24(b) would provide page limits for oppositions
filed in response to motions. Current contested case practice provides
an equal number of pages for an opposition as its corresponding motion.
This is generally consistent with motions practice in federal courts.
The proposed rule would continue the current practice.
Proposed § 42.24(c) would provide page limits for replies.
Current contested case practice provides a 15 page limit for priority
motion replies, a 5 page limit for miscellaneous (procedural) motion
replies, and a 10 page limit for all other motions. The proposed rule
is consistent with current contested case practice for procedural
motions. The proposed rule would provide a 15 page limit for reply to
petitions requesting a trial, which the Office believes is sufficient
based on current practice. Current contested case practice has shown
that such page limits do not unduly restrict the parties and, in fact,
have provided sufficient flexibility to parties to not only reply to
the motion but also help to focus on the issues. Thus, it is
anticipated that default page limits would minimize the economic impact
on small entities by focusing on the issues in the trials.
Discovery: The Office considered a procedure for discovery similar
to the one available during district court litigation. Discovery of
that scope has been criticized sharply particularly when attorneys use
discovery tools as tactical weapons, which hinder the "just, speedy,
and inexpensive determination of every action and proceedings." See
Introduction to An E-Discovery Model Order available at
http://www.cafc.uscourts.gov/images/stories/announcements/Ediscovery_
Model_Order.pdf. Accordingly, this alternative would have been inconsistent
with objective of the Leahy-Smith America Invents Act that the
Director, in prescribing rules for the inter partes, post-grant and
covered business method patent reviews, consider the effect of the
rules on the economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to complete
timely the instituted proceedings. Prescribing the same standard for
derivations allows for efficient proceedings using practices that are
consistent as possible. It is envisioned that the public burden would
be reduced by setting discover standards consistently across all trial
proceedings at the Board.
Additional discovery increases trial costs and increases the
expenditures of time by the parties and the Board. To promote effective
discovery, the proposed rule would require a showing that the
additional requested discovery is in the interests of justice, placing
an affirmative burden upon a party seeking the discovery to show how
the proposed discovery would be productive. The Board's experience in
conducted contested cases, however, is that such showings are often
lacking and authorization for additional discovery is expected to be
rare.
The Office is proposing a default scheduling order to provide
limited discovery as a matter of right and provide parties with the
ability to seek additional discovery on a case-by-case basis. In
weighing the need for additional discovery, should a request be made,
the Board would consider the economic impact on the opposing party.
This would tend to limit additional discovery where a party is a small
entity.
Pro Hac Vice: The Office considered whether to allow counsel to
appear pro hac vice. In certain cases, highly skilled, but non-
registered attorneys have appeared satisfactorily before the Board in
contested cases. The Board may recognize counsel pro hac vice during a
proceeding upon a showing of good cause. Proceedings before the Office
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can be technically complex. Consequently, the grant of a motion to
appear pro hac vice is a discretionary action taking into account the
specifics of the proceedings. Similarly, the revocation of pro hac vice
is a discretionary action taking into account various factors,
including incompetence, unwillingness to abide by the Office's Rules of
Professional Conduct, prior findings of misconduct before the Office in
other proceedings, and incivility.
The Board's past practice has required the filing of a motion by a
registered patent practitioner seeking pro hac vice representation
based upon a showing of: (1) How qualified the unregistered
practitioner is to represent the party in the proceeding when measured
against a registered practitioner, and, (2) whether the party has a
genuine need to have the particular unregistered practitioner represent
it during the proceeding. This practice has proven effective in the
limited number of contested cases where such requests have been
granted. The proposed rule, if adopted, would allow for this practice
in the new proceedings authorized by the Leahy-Smith America Invents
Act.
The proposed rules would provide a limited delegation to the Board
under 35 U.S.C. 2(b)(2) and 32 to regulate the conduct of counsel in
Board proceedings. The proposed rule would delegate to the Board the
authority to conduct counsel disqualification proceedings while the Board
has jurisdiction over a proceeding. The rule would also delegate to the
Chief Administrative Patent Judge the authority to make final a decision
to disqualify counsel in a proceeding before the Board for the purposes
of judicial review. This delegation would not derogate from the Director
the prerogative to make such decisions, nor would it prevent the Chief
Administrative Patent Judge from further delegating authority to an
administrative patent judge.
The Office considered broadly permitting practitioners not
registered to practice by the Office to represent parties in trial as
well as categorically prohibiting such practice. A prohibition on the
practice would be inconsistent with the Board's experience, and more
importantly, might result in increased costs particularly where a small
entity has selected its district court litigation team for
representation before the Board, and has a patent review filed after
litigation efforts have commenced. Alternatively, broadly making the
practice available would create burdens on the Office in administering
the trials and in completing the trial within the established
timeframe, particularly if the selected practitioner does not have the
requisite skill. In weighing the desirability of admitting a
practitioner pro hac vice, the economic impact on the party in interest
would be considered which would tend to increase the likelihood that a
small entity could be represented by a non-registered practitioner.
Accordingly, the alternatives to eliminate pro hac vice practice or to
permit it more broadly would have been inconsistent with the efficient
administration of the Office and the integrity of the patent system.
Default Electronic Filing: The Office considered a paper filing
system and a mandatory electronic filing system (without any
exceptions) as alternatives to the proposed requirement that all papers
are to be electronically filed, unless otherwise authorized.
Based on the Office's experience, a paper based filing system
increases delay in processing papers, delay in public availability, and
the chance that a paper may be misplaced or made available to an
improper party if confidential. Accordingly, the alternative of a paper
based filing system would have been inconsistent with the efficient
administration of the Office.
An electronic filing system (without any exceptions) that is
rigidly applied would result in unnecessary cost and burdens,
particularly where a party lacks the ability to file electronically. By
contrast, if the proposed option is adopted, it is expected that the
entity size and sophistication would be considered in determining
whether alternative filing methods would be authorized.
6. Identification, to the Extent Practicable, of All Relevant
Federal Rules Which May Duplicate, Overlap, or Conflict With the
Proposed Rules:
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37 CFR 1.99 provides for the submission of information after
publication of a patent application during examination by third
parties.
37 CFR 1.171-1.179 provide for applications to reissue a patent to
correct errors, including where a claim in a patent is overly broad.
37 CFR 1.291 provides for the protest against the issuance of a
patent during examination.
37 CFR 1.321 provides for the disclaimer of a claim by a patentee.
37 CFR 1.501 and 1.502 provide for ex parte reexamination of
patents. Under these rules, a person may submit to the Office prior art
consisting of patents or printed publications that are pertinent to the
patentability of any claim of a patent, and request reexamination of
any claim in the patent on the basis of the cited prior art patents or
printed publications. Consistent with 35 U.S.C. 302-307, ex parte
reexamination rules provide a different threshold for initiation,
require the proceeding to be conducted by an examiner with a right of
appeal to the Patent Trial and Appeal Board, and allow for limited
participation by third parties.
37 CFR 1.902-1.997 provide for inter partes reexamination of
patents. Similar to ex parte reexamination, inter partes reexamination
provides a procedure in which a third party may request reexamination
of any claim in a patent on the basis of the cited prior art patents
and printed publication. The inter partes reexamination practice will
be eliminated, except for requests filed before the effective date of
September 16, 2012. See § 6(c)(3)(C) of the Leahy-Smith America
Invents Act.
Other countries have their own patent laws, and an entity desiring
a patent in a particular country must make an application for patent in
that country, in accordance with the applicable law. Although the
potential for overlap exists internationally, this cannot be avoided
except by treaty (such as the Paris Convention for the Protection of
Industrial Property, or the Patent Cooperation Treaty (PCT)).
Nevertheless, the Office believes that there are no other duplicative
or overlapping foreign rules.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be significant for purposes of
Executive Order 12866 (Sept. 30, 1993), as amended by Executive Order
13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007).
Based on the petition and other filing requirements for initiating
a derivation review proceeding, the USPTO estimates the burden of the
proposed rules on the public to be $11,865,210 in fiscal year 2013,
which represents the sum of the estimated total annual (hour)
respondent cost burden ($11,844,410) plus the estimated total annual
non-hour respondent cost burden ($20,800) provided in Part O, Section
II, of this notice, infra.
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has to the extent feasible and applicable: (1)
Made a reasoned determination that the benefits justify the costs of
the rule; (2) tailored the rule to impose the least burden on society
consistent with obtaining the regulatory objectives; (3) selected a
regulatory approach that maximizes net benefits; (4) specified
performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector, and the public as a whole,
and provided online access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
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E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not effect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801-808), prior to issuing any final rule, the United
States Patent and Trademark Office will submit a report containing the
final rule and other required information to the U.S. Senate, the U.S.
House of Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this notice are not expected to
result in an annual effect on the economy of 100 million dollars or
more, a major increase in costs or prices, or significant adverse
effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign based enterprises in domestic and export markets.
Therefore, this notice is not expected to result in a "major rule" as
defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes proposed in
this notice do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501-1571.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321-4370h.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
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Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501-3549) requires that the USPTO consider the impact of
paperwork and other information collection burdens imposed on the
public. This proposed rulemaking involves information collection
requirements which are subject to review by the Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C.
3501-3549). The collection of information involved in this notice has
been submitted to OMB under OMB control number 0651-00xx. In the Notice
"Rules of Practice for Trials before the Patent Trial and Appeal Board
and Judicial Review of Patent Trial and Appeal Board Decisions," RIN
0651-AC70, the information collection for all of the new trials
authorized by the Leahy-Smith America Invents Act were provided. This
notice also provides the subset of burden created by the derivation
provisions. The proposed collection will be available at the OMB's
Information Collection Review Web site (www.reginfo.gov/public/do/PRAMain).
The USPTO is submitting the information collection to OMB for its
review and approval because this notice of proposed rulemaking will add
the following to a collection of information:
(1) Petitions to institute a derivation proceeding (§§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.22, 42.24(a)(4),42.63, 42.65, and
42.402 through 42.406);
(2) Motions (§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.22,
42.24(a)(5), 42.51, 42.52, 42.53, 42.54, 42.63, 42.64, and 42.65);
(3) Oppositions (§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.23,
42.24(b), 42.51, 42.52, 42.53, 42.54, 42.63, 42.64, and 42.65); and
(4) Replies (§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.23,
42.24(c), 42.51, 42.52, 42.53, 42.54, 42.63, and 42.65).
The proposed rules also permit filing requests for oral argument
(§ 42.70), requests for rehearing (§ 42.71(c)), requests for
adverse judgment (§ 42.73(b)), requests that a settlement be
treated as business confidential (§ 42.74(b) and 42.409), and
arbitration agreements and awards (§ 42.410) to a collection of
information.
I. Abstract: The USPTO is required by 35 U.S.C. 131 and 151 to
examine applications and, when appropriate, issue applications as
patents.
35 U.S.C. 135 in effect on March 16, 2013, will provide for
petitions to institute a derivation proceeding at the USPTO for certain
applications. The new rules for initiating and conducting these
proceedings are proposed in this notice as a new subpart E of new part
42 of title 37 of the Code of Federal Regulations.
In estimating the number of hours necessary for preparing a
petition to institute a derivation proceeding, the USPTO considered the
estimated cost of preparing a request for inter partes reexamination
($46,000), the median billing rate ($340/hour), and the observation
that the cost of inter partes reexamination has risen the fastest of
all litigation costs since 2009 in the AIPLA Report of the Economic
Survey 2011. It was estimated that a petition for an inter partes
review and an inter partes reexamination request would cost the same to
the preparing party ($46,000). The cost of preparing a petition for
post-grant or covered business method patent review is estimated to be
33.333% higher than that cost of preparing an inter partes review
petition because the petition for post-grant or covered business method
patent review may seek to institute a proceeding on additional grounds
such as subject matter eligibility. It is expected that petitions for
derivation will have the same complexity and cost as a petition for
post-grant review because derivation proceedings raise issues of
communication, which have similar complexity to the public use and sale
and written description issues that can be raised in a post-grant
review. Thus, the Office estimates that the cost of preparing a
petition for derivation will be $61,333.
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In estimating the number of hours necessary for preparing motions
after instituting and participating in the review, the USPTO considered
the AIPLA Report of the Economic Survey 2011 which reported the average
cost of a party to a two-party interference to the end of the
preliminary motion phase ($322,000) and inclusive of all costs
($631,000). The preliminary motion phase is a good proxy for
patentability reviews since that is the period of current contested
cases before the trial section of the Board where most patentability
motions are currently filed.
The USPTO also reviewed recent contested cases before the trial
section of the Board to collect data on the average number of motions
for any matter including priority, the subset of those motions directed
to non-priority issues, the subset of those motions directed to non-
priority patentability issues, and the subset of those motions directed
to patentability issues based on a patent or printed publication on the
basis of 35 U.S.C. 102 or 103. The review of current contested cases
before the trial section of the Board indicated that approximately 15%
of motions were directed to prior art grounds, 18% of motions were
directed to other patentability grounds, 27% were directed to
miscellaneous issues, and 40% were directed to priority issues. It was
estimated that the cost per motion to a party in current contested
cases before the trial section of the Board declines because of overlap
in subject matter, expert overlap, and familiarity with the technical
subject matter. Given the overlap of subject matter, a proceeding with
fewer motions will have a somewhat less than proportional decrease in
costs since the overlapping costs will be spread over fewer motions.
Derivations will be more like current contested cases before the
trial section of the Board inasmuch as they may have a period which
sets the stage for determining derivation and a derivation period. One
half of derivations are anticipated to end in the preliminary motion
period, while the other half are anticipated to proceed to decision on
derivation. While it is recognized that fewer than half of all current
contested cases before the trial section of the Board proceed to a
priority decision, derivation contests are often more protracted than
other current contested cases before the trial section of the Board.
The costs associated with derivations through the preliminary motion
period and through the derivation period should be comparable to the
corresponding costs of current contested cases before the trial section
of the Board.
The title, description, and respondent description of the
information collection are shown below with an estimate of the annual
reporting burdens. Included in this estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information. The principal impact of
the proposed changes in this notice of proposed rulemaking is to
implement the changes to Office practice necessitated by § 3(i) of
the Leahy-Smith America Invents Act.
The public uses this information collection to request review and
derivation proceedings and to ensure that the associated fees and
documentation are submitted to the USPTO.
II. Data
Needs and Uses: The information supplied to the USPTO by a petition
to institute a derivation proceeding as well as the motions authorized
following the institution is used by the USPTO to determine whether to
initiate a derivation proceeding under 35 U.S.C. 135, as amended, and
to prepare a final decision under 35 U.S.C. 135, as amended.
OMB Number: 0651-00xx.
Title: Patent Review and Derivation Proceedings.
Form Numbers: None.
Type of Review: New Collection.
Likely Respondents/Affected Public: Individuals or households,
businesses or other for profit, not-for-profit institutions, farms,
Federal Government, and state, local, or tribal governments.
Estimated Number of Respondents/Frequency of Collection: 100
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respondents and 288 responses per year.
Estimated Time per Response: The USPTO estimates that it will take
the public from 0.1 to 180.4 hours to gather the necessary information,
prepare the documents, and submit the information to the USPTO.
Estimated Total Annual Respondent Burden Hours: 34,836.5 hours per
year.
Estimated Total Annual (Hour) Respondent Cost Burden: $11,844,410
per year. The USPTO expects that the information in this collection
will be prepared by attorneys. Using the professional rate of $340 per
hour for attorneys in private firms, the USPTO estimates that the
respondent cost burden for this collection will be approximately
$11,844,410 per year (34,836.5 hours per year multiplied by $340 per
hour).
Estimated Total Annual Non-hour Respondent Cost Burden: $20,800 per
year. There are no capital start-up or maintenance costs associated
with this information collection. However, this collection does have
annual (non-hour) costs in the form of filing fees. There are filing
fees associated with petitions for derivation proceedings and for
requests to treat a settlement as business confidential. The total fees
for this collection are calculated in the accompanying table. The USPTO
estimates that the total fees associated with this collection will be
approximately $20,800 per year.
Therefore, the total cost burden in fiscal year 2013 is estimated
to be $11,865,210 (the sum of the estimated total annual (hour)
respondent cost burden ($11,844,410) plus the estimated total annual
non-hour respondent cost burden ($20,800)).
Estimated time Estimated Estimated
for response annual annual
Item (hours) responses burden hours
Petition for derivation 180.4 50 9,020
Request for Reconsideration 80 5 400
Motions, replies and 120 210 25,200
oppositions in
derivation proceeding
Request for oral hearing 20 10 200
Request to treat a 2 2 4
settlement as business
confidential
Request for adverse judgment, 1 2 2
default adverse judgment
or settlement
Arbitration agreement and 4 2 8
award
Request to make a settlement 1 2 2
agreement available
Notice of judicial review of 0.1 5 .5
a Board decision (e.g.,
notice of appeal under
35 U.S.C. 142)
Totals 288 34,836.5
Estimated annual Estimated annual
Item responses Fee amount filing costs
Petition for derivation 50 $400 $20,000
Request for Reconsideration 5 0 0
Motions, replies and 210 0 0
oppositions in derivation
proceeding
Request for Oral Hearing 20 10 200
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Request to treat a settlement
as business confidential 2 0 0
Request for adverse judgment, 2 0 0
default adverse judgment
or settlement
Arbitration agreement and awards 2 0 0
Request to make a settlement 2 400 800
agreement available
Notice of judicial review of 5 0 0
a Board decision (e.g.,
notice of appeal under
35 U.S.C. 142)
Totals 288 20,800
III. Solicitation
The agency is soliciting comments to: (1) Evaluate whether the
proposed information requirement is necessary for the proper
performance of the functions of the agency, including whether the
information will have practical utility; (2) evaluate the accuracy of
the agency's estimate of the burden; (3) enhance the quality, utility,
and clarity of the information to be collected; and (4) minimize the
burden of collecting the information on those who are to respond,
including by using appropriate automated, electronic, mechanical, or
other technological collection techniques or other forms of information
technology.
Interested persons are requested to send comments regarding this
information collection by April 10, 2012, to: (1) The Office of
Information and Regulatory Affairs, Office of Management and Budget,
New Executive Office Building, Room 10202, 725 17th Street NW.,
Washington, DC 20503, Attention: Nicholas A. Fraser, the Desk Officer
for the United States Patent and Trademark Office, and via email at
nfraser@omb.eop.gov; and (2) The Board of Patent Appeals and
Interferences by electronic mail message over the Internet addressed to
derivation@uspto.gov, or by mail addressed to: Mail Stop Patent Board,
Director of the United States Patent and Trademark Office, P.O. Box
1450, Alexandria, VA 22313-1450, marked to the attention of "Lead
Judge Michael Tierney, Derivation Proposed Rules."
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 42
Administrative practice and procedure, Inventions and patents,
Lawyers.
Proposed Amendments to the Regulatory Text
For the reasons stated in the preamble, the Under Secretary of
Commerce for Intellectual Property and Director of the United States
Patent and Trademark Office propose to amend 37 CFR part 42 as proposed
to be added in the February 9, 2012, issue of the Federal Register as
follows:
PART 42 - TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
1. The authority citation for 37 CFR part 42 continues to read as
follows:
Authority: 35 U.S.C. (2)(b)(2), 6, 21, 23, 41, 135, 311, 312,
316, 321-326 and Leahy-Smith America Invents Act, Pub. L. 112-29,
sections 6(c), 6(f) and 18, 125 Stat. 284, 304, 311, and 329 (2011).
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2. A new subpart E is added to read as follows:
Subpart E - Derivation
General
§
42.400 Procedure; pendency.
42.401 Definitions.
42.402 Who may file a petition for a derivation proceeding.
42.403 Time for filing.
42.404 Derivation fee.
42.405 Content of petition.
42.406 Service of petition.
42.407 Filing date.
Instituting Derivation Proceeding
42.408 Institution of derivation proceeding.
After Institution of Derivation Proceeding
42.409 Settlement agreements.
42.410 Arbitration.
42.411 Common interests in the invention.
42.412 Public availability of Board records.
Subpart E - Derivation
General
§ 42.400 Procedure; pendency
(a) A derivation proceeding is a trial subject to the procedures
set forth in subpart A of this part.
(b) The Board may for good cause authorize or direct the parties to
address patentability issues that arise in the course of the derivation
proceeding.
§ 42.401 Definitions.
In addition to the definitions in § 42.2, the following
additional definitions apply to proceedings under this subpart:
Agreement or understanding under 35 U.S.C. 135(e) means settlement
for the purposes of § 42.74.
Applicant includes a reissue applicant.
Application includes both an application for an original patent and
an application for a reissued patent.
Petitioner means a patent applicant who petitions for a
determination that another party named in an earlier-filed patent
application allegedly derived a claimed invention from an inventor
named in the petitioner's application and filed the earlier application
without authorization.
Respondent means a party other than the petitioner.
§ 42.402 Who may file a petition for a derivation proceeding.
An applicant for patent may file a petition to institute a
derivation proceeding in the Office.
§ 42.403 Time for filing.
A petition for a derivation proceeding must be filed within one
year after the first publication of a claim to an invention that is the
same or substantially the same as the earlier application's claim to
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the allegedly derived invention.
§ 42.404 Derivation fee.
(a) A derivation fee set forth in § 42.15(c) must accompany the
petition.
(b) No filing date will be accorded to the petition until payment
is complete.
§ 42.405 Content of petition.
(a) Grounds for standing. The petition must:
(1) Demonstrate compliance with §§ 42.402 and 42.403; and
(2) Show that the petitioner has at least one claim that is:
(i) The same or substantially the same as the respondent's claimed
invention; and
(ii) Not patentably distinct from the invention disclosed to the
respondent.
(b) In addition to the requirements of §§ 42.8 and 42.22,
the petition must:
(1) Provide sufficient information to identify the application or
patent for which the petitioner seeks a derivation proceeding;
(2) Demonstrate that an invention was derived from an inventor
named in the petitioner's application and, without authorization, the
earliest application claiming such invention was filed; and
(3) For each of the respondent's claims to the derived invention,
(i) Show why the claimed invention is not patentably distinct from
the invention disclosed to the respondent, and
(ii) Identify how the claim is to be construed. Where the claim to
be construed contains a means-plus-function or step-plus-function
limitation as permited under 35 U.S.C. 112, sixth paragraph, the
construction of the claim must identify the specific portions of the
specification that describe the structure, material, or acts
corresponding to each claimed function.
(c) Sufficiency of showing. A derivation showing is not sufficient
unless it is supported by substantial evidence, including at least one
affidavit addressing communication of the derived invention and lack of
authorization that, if unrebutted, would support a determination of
derivation. The showing of communication must be corroborated.
§ 42.406 Service of petition.
In addition to the requirements of § 42.6, the petitioner must
serve the petition and exhibits relied upon in the petition as follows:
(a) The petition and supporting evidence must be served at the
correspondence address of record for the earlier application. The
petitioner may additionally serve the petition and supporting evidence
on the respondent at any other address known to the petitioner as
likely to effect service.
(b) If the petitioner cannot effect service of the petition and
supporting evidence at the correspondence address of record for the
subject application or patent, the petitioner must immediately contact
the Board to discuss alternate modes of service.
§ 42.407 Filing date.
(a) Complete petition. A petition to institute a derivation
proceeding will not be accorded a filing date until the petition
satisfies all of the following requirements:
(1) Complies with § 42.405,
(2) Service of the petition on the correspondence address of record
as provided in § 42.406, and
(3) Is accompanied by the fee to institute required in § 42.15(c).
(b) Incomplete request. Where the petitioner files an incomplete
request, no filing date will be accorded, and the Office will dismiss
the request if the deficiency in the request is not corrected within
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the earlier of either one month from notice of the incomplete request,
or the expiration of the statutory deadline in which to file a petition
for derivation.
Instituting Derivation Proceeding
§ 42.408 Institution of derivation proceeding.
(a) An administrative patent judge institutes, and may as necessary
reinstitute, the derivation proceeding on behalf of the Director.
(b) Additional derivation proceeding. The petitioner may suggest
the addition of a patent or application to the derivation proceeding.
The suggestion should make the showings required under § 42.405 of
this part and explain why the suggestion could not have been made in
the original petition.
After Institution of Derivation Proceeding
§ 42.409 Settlement agreements.
An agreement or understanding under 35 U.S.C. 135(e) is a
settlement for the purposes of § 42.74.
§ 42.410 Arbitration.
(a) Parties may resort to binding arbitration to determine any
issue. The Office is not a party to the arbitration. The Board is not
bound by, and may independently determine, any question of
patentability.
(b) The Board will not set a time for, or otherwise modify the
proceeding for, an arbitration unless:
(1) It is to be conducted according to Title 9 of the United States
Code;
(2) The parties notify the Board in writing of their intention to
arbitrate;
(3) The agreement to arbitrate:
(i) Is in writing;
(ii) Specifies the issues to be arbitrated;
(iii) Names the arbitrator, or provides a date not more than 30
days after the execution of the agreement for the selection of the
arbitrator;
(iv) Provides that the arbitrator's award shall be binding on the
parties and that judgment thereon can be entered by the Board;
(v) Provides that a copy of the agreement is filed within 20 days
after its execution; and
(vi) provides that the arbitration is completed within the time the
Board sets.
(c) The parties are solely responsible for the selection of the
arbitrator and the conduct of the arbitration.
(d) The Board may determine issues the arbitration does not
resolve.
(e) The Board will not consider the arbitration award unless it:
(1) Is binding on the parties;
(2) Is in writing;
(3) States in a clear and definite manner each issue arbitrated and
the disposition of each issue; and
(4) Is filed within 20 days of the date of the award.
(f) Once the award is filed, the parties to the award may not take
actions inconsistent with the award. If the award is dispositive of the
contested subject matter for a party, the Board may enter judgment as
to that party.
§ 42.411 Common interests in the invention.
The Board may decline to institute, or if already instituted the
Board may issue judgment in, a derivation proceeding between an
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application and a patent or another application that are commonly
owned.
§ 42.412 Public availability of Board records
(a) Publication-(1) Generally. Any Board decision is available for
public inspection without a party's permission if rendered in a file
open to the public pursuant to § 1.11 of this chapter or in an
application that has been published in accordance with §§ 1.211
to 1.221 of this chapter. The Office may independently publish any
Board decision that is available for public inspection.
(2) Determination of special circumstances. Any Board decision not
publishable under paragraph (a)(1) of this section may be published or
made available for public inspection if the Director believes that
special circumstances warrant publication and a party does not petition
within two months after being notified of the intention to make the
decision public, objecting in writing on the ground that the decision
discloses the objecting party's trade secret or other confidential
information and stating with specificity that such information is not
otherwise publicly available.
(b) Record of proceeding. (1) The record of a Board proceeding is
available to the public, unless a patent application not otherwise
available to the public is involved.
(2) Notwithstanding paragraph (b)(1) of this section, after a final
Board decision in or judgment in a Board proceeding, the record of the
Board proceeding will be made available to the public if any involved
file is or becomes open to the public under § 1.11 of this title or
an involved application is or becomes published under §§ 1.211
to 1.221 of this chapter.
January 31, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
| Practice Guide for Proposed Trial Rules and Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Proposed Rules |
Department of Commerce
Patent and Trademark Office
37 CFR Part 42
[Docket No.: PTO-P-2011-0094]
Practice Guide for Proposed Trial Rules and
Rules of Practice for Trials Before the
Patent Trial and Appeal Board and
Judicial Review of Patent Trial and Appeal Board Decisions;
Proposed Rules
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for Comments.
SUMMARY: The Leahy-Smith America Invents Act establishes several new
trial proceedings to be conducted by the Patent Trial and Appeal Board
(Board) including inter partes review, post-grant review, the
transitional program for covered business method patents, and
derivation proceedings. The Leahy-Smith America Invents Act also
requires the United States Patent and Trademark Office (Office or
USPTO) to promulgate rules specific to each proceeding. In separate
rulemakings elsewhere in this issue and in the February 10, 2012, issue
of the Federal Register, the Office proposes rules relating to Board
trial practice for the new proceedings. The Office publishes in this
document a practice guide for the proposed trial rules to advise the
public on the general framework of the proposed regulations, including
the structure and times for taking action in each of the new
proceedings.
DATES: Written comments must be received on or before April 9, 2012 to
ensure consideration.
ADDRESSES: Comments on the practice guide should be sent by electronic
mail message over the Internet addressed to: patent_trial_rules@uspto.gov.
Comments may also be submitted by postal mail addressed to:
Mail Stop Patent Board, Director of the United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention
of "Lead Judge Michael Tierney, Practice Guide for Patent Proposed Trial
Rules." Comments on the proposed rules should be directed to the addresses
provided in the notices of proposed rulemaking.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov/) for additional
instructions on providing comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments are preferred to be submitted in
plain text, but also may be submitted in ADOBE® portable
document format or MICROSOFT WORD® format. Comments not
submitted electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE® portable
document format.
The comments will be available for public inspection at the Board
of Patent Appeals and Interferences, currently located in Madison East,
Ninth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also
will be available for viewing via the Office's Internet Web site
(http://www.uspto.gov/). Because comments will be made available for
public inspection, information that the submitter does not desire to
make public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Michael Tierney, Lead Administrative
Patent Judge, Board of Patent Appeals and Interferences, by telephone
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at (571) 272-9797.
SUPPLEMENTARY INFORMATION:
Executive Summary
The proposed regulations lay out a framework for conducting the
proceedings aimed at streamlining and converging the issues for
decision. In doing so, the Office's goal is to conduct proceedings in a
timely, fair and efficient manner. Further, the Office designed the
proceedings to allow each party to determine the preferred manner of
putting forward its case, subject to the disinterested guidance of
judges who determine the needs of a particular case through procedural
and substantive rulings throughout the proceedings.
Background
The Leahy-Smith America Invents Act (AIA) establishes several new
trial proceedings to be conducted by the Board including: (1) Inter
partes review (IPR); (2) post-grant review (PGR); (3) a transitional
program for covered business method patents (CBM); and (4) derivation
proceedings. The AIA requires the USPTO to promulgate rules specific to
each proceeding, with the PGR, IPR and CBM rules in effect one year
after AIA enactment and the derivation rules in effect 18 months after
AIA enactment. This Practice Guide is intended to advise the public on
the general framework of the proposed rules, including the structure
and times for taking action in each of the new proceedings.
In developing the proposed rules and this guide, the Office
expresses its gratitude for the thoughtful and comprehensive comments
provided by the public, which are available on the USPTO Web site:
http://www.uspto.gov/patents/law/comments/aia_implementation.jsp.
Statutory Requirements
The AIA provides certain minimum requirements for each of the new
proceedings. Provided below is a brief overview of these requirements.
Proceedings begin with the filing of a petition to institute a
trial. The petition must be timely filed and be accompanied by the
evidence the petitioner seeks to rely upon. For IPR, PGR, and CBM, the
patent owner is afforded an opportunity to file a preliminary response.
35 U.S.C. 313, as amended, and 35 U.S.C. 323.
The Director may institute a trial where the petitioner establishes
that the standards for instituting the requested trial are met.
Conversely, the Director may not authorize a trial where the
information presented in the petition, taking into account any
preliminary patent owner response, fails to meet the requisite standard
for instituting the trial, e.g., 35 U.S.C. 314, as amended, and 35
U.S.C. 324. Where there are multiple matters in the Office involving
the same patent, the Director may determine how the proceeding will
proceed, including providing for stay, transfer, consolidation, or
termination of any such matter, e.g., 35 U.S.C. 315, as amended, and 35
U.S.C. 325.
The AIA requires that the Board conduct AIA trials and that the
Director prescribe regulations concerning the conduct of those trials.
35 U.S.C. 6, 135 and 316, as amended, and 35 U.S.C. 326. For example,
for IPR, PGR, and CBM, the AIA mandates the promulgation of rules
including motions to seal, procedures for filing supplemental
information, standards and procedures for discovery, sanctions for
improper use of the proceeding, entry of protective orders, and oral
hearings. Additionally, the AIA mandates the promulgation of rules for
IPR, PGR, and CBM concerning the submission of a patent owner response
with supporting evidence and allowing the patent owner a motion to
amend the patent.
A petitioner and a patent owner may terminate the proceeding with
respect to the petitioner by filing a written agreement with the
Office, unless the Office has already decided the merits of the
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proceeding, e.g., 35 U.S.C. 317, as amended, and 35 U.S.C. 327. If no
petitioner remains in the proceeding, the Office may terminate the review
or proceed to a final written decision. For derivation proceedings, the
parties may arbitrate issues in the proceeding, but nothing precludes the
Office from determining the patentability of the claimed inventions
involved in the proceeding. 35 U.S.C. 135, as amended. Where a trial has
been instituted and not dismissed, the Board will issue a final written
decision with respect to the involved patent and/or applications. 35 U.S.C.
135 and 35 U.S.C. 318, as amended, and 35 U.S.C. 328.
For IPR, PGR and CBM, the AIA requires that the Office consider the
effect of the regulations on the economy, the integrity of the patent
system, the efficient administration of the Office, and the ability of
the Office to timely complete the proceedings. 35 U.S.C. 316, as
amended, and 35 U.S.C. 326. In developing the general trial rules, as
well as the individual proceeding specific rules, the Office has taken
these considerations into account. Further, the individual proceeding
specific rules take into account the jurisdictional and timing
requirements for the particular proceedings.
General Overview
Generally, the proceedings begin with the filing of a petition that
identifies all of the claims challenged and the grounds and supporting
evidence on a claim-by-claim basis. Within two months of notification
of a filing date, the patent owner in an IPR, PGR, or CBM proceeding
may file a preliminary response to the petition, including a simple
statement that patent owner elects not to respond to the petition prior
to the institution of a review. The Board will determine whether to
institute the requested proceeding within three months of the date the
patent owner's preliminary response was due or was filed, whichever is
first.
In instituting a trial, the Board will narrow the issues for final
decision by authorizing the trial to proceed only on the challenged
claims for which the threshold requirements for the proceeding have
been met. Further, the Board will identify which of the grounds the
trial will proceed upon on a claim-by-claim basis. Any claim or issue
not included in the authorization for review is not part of the trial.
A party dissgatisfied with the Board's determination may request
rehearing as to points believed to have been overlooked or
misapprehended. See proposed § 42.71(c)(1).
The Board will enter a Scheduling Order (Appendix A) concurrent
with the decision to institute the proceeding. The Scheduling Order
will set due dates for the proceeding taking into account the
complexity of the proceeding but ensuring that the trial is completed
within one year of institution.
For example, a Scheduling Order for an IPR might provide a four
month deadline for patent owner discovery and for filing a patent owner
response and motion to amend. Once the patent owner's response and
motion to amend have been filed, the Scheduling Order might provide the
petitioner with two months for discovery and for filing a petitioner's
reply to the response and the petitioner's opposition to the amendment.
The Scheduling Order might then provide the patent owner with one month
for discovery and for filing a patent owner reply to petitioner's
opposition to a patent owner amendment. A representative timeline is
provided below:
[GRAPHIC] [TIFF OMITTED] TP09FE12.000
Sequence of discovery. Once instituted, absent special
circumstances, discovery will proceed in a sequenced fashion. For
example, the patent owner may begin deposing the petitioner's
declarants once the proceeding is instituted. After patent owner has
filed a patent owner response and any motion to amend the claims, the
petitioner may depose the patent owner's declarants. Similarly, after
the petitioner has filed a reply to the patent owner's response and an
opposition to an amendment, the patent owner may depose the
petitioner's declarants and file a reply in support of its claim
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amendments. Where the patent owner relies upon new declaration evidence
in support of its amendments, the petitioner will be authorized to
depose the declarants and submit observations on the deposition. Once
the time for taking discovery in the trial has ended, the parties will
be authorized to file motions to exclude evidence believed to be
inadmissible. Admissibility of evidence is generally governed by the
Federal Rules of Evidence.
Sequence of filing responses and motions. An initial conference
call will be held about one month from the date of institution to
discuss the motions that the parties intend to file and to determine if
any adjustment needs to be made to the Scheduling Order. After a patent
owner response has been filed, along with any motion to amend the
claims, the petitioner will have the opportunity to depose the patent
owner's declarants. The petitioner will then file a reply to the patent
owner's response and any opposition to the patent owner's amendment.
Both parties will be permitted an opportunity to file motions to
exclude an opponent's evidence believed to be inadmissible. After all
motions have been filed, the parties will be afforded an opportunity to
have an oral argument at the Board.
Summary of the Proposed Rules
The following is a general summary of the rules for the proceedings.
I. General Procedures
The rules are to be implemented so as to ensure the just, speedy,
and inexpensive resolution of a proceeding and, where appropriate, the
rules may be modified to accomplish these goals, proposed § 42.1(b);
proposed § 42.5(a) and (b) (references to proposed § 42.x refer to title
37 of the Code of Federal Regulations).
A. Jurisdiction and Management of the Record
1. Jurisdiction: 35 U.S.C. 6(b), as amended, provides that the
Board is to conduct derivation proceedings, inter partes reviews, and
post-grant reviews. The Board also conducts transitional program for
covered business method reviews, which are subject to Board review
under 35 U.S.C. 6(b), as amended, and 35 U.S.C. 326(c) and Public Law
112-29, § 18. The Board therefore will have exclusive jurisdiction
within the Office over every application and patent that is involved in
a derivation, IPR, PGR or CBM proceeding. Ex parte reexamination
proceedings and inter partes reexamination proceedings are not involved
applications or patents in proceedings and are treated separately
unless specifically consolidated with a proceeding.
2. Prohibition on Ex Parte Communications: All substantive
communications with the Board regarding a proceeding must include all
parties to the proceeding, except as otherwise authorized, proposed
§ 42.5(d). In general, it would be prudent to avoid substantive ex
parte discussions of a pending trial with a Board member or Board
employee. The prohibition on ex parte communications does not extend
to: (1) Ministerial communications with support staff (for instance, to
arrange a conference call); (2) conference calls or hearings in which
opposing counsel declines to participate; (3) informing the Board in
one proceeding of the existence or status of a related Board
proceeding; or (4) reference to a pending case in support of a general
proposition (for instance, citing a published opinion from a pending
case or referring to a pending case to illustrate a systemic problem).
Arranging a conference call with the Board. When arranging a
conference call, be prepared to discuss with a Trial Section paralegal
why the call is needed and what materials may be needed during the
call, e.g., a particular exhibit.
Refusal to participate. The Board has the discretion to permit a
hearing or conference call to take place even if a party refuses to
participate. In such cases, the Board may require additional
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safeguards, such as the recording of the communication and the entry of
the recording into the record.
B. Counsel
Need for lead and back-up counsel. A party represented by counsel
should designate both a lead as well as a back-up counsel who can
conduct business on behalf of the lead counsel, as instances may arise
where lead counsel may be unavailable. Proposed § 42.10(a).
Power of attorney. A power of attorney must be filed with the
designation of counsel, unless the designated counsel is already
counsel of record. Proposed § 42.10(b).
Pro hac vice. The Board, consistent with current practice, may
recognize counsel pro hac vice during a proceeding upon a showing of
good cause, subject to such conditions as the Board may impose.
Proposed § 42.10(c). Proceedings before the Office can be
technically complex. For example, it is expected that amendments to a
patent will be sought. Consequently, the grant of a motion to appear
pro hac vice is a discretionary action taking into account the
specifics of the proceedings. Similarly, the revocation of pro hac vice
is a discretionary action taking into account various factors,
including incompetence, unwillingness to abide by the Office's Rules of
Professional Conduct, and incivility.
C. Electronic Filing
Electronic filing is the default manner in which documents are to
be filed with the Board. Proposed § 42.6(b). Electronic filing of
legal documents is being implemented across the country in state and
federal courts. The use of electronic filing aids in the efficient
administration of the proceeding, improves public accessibility, and
provides a more effective document management system for the Office and
parties. The manner of submission will be established by the Board and
will be published on the Web site of the Office (http://www.uspto.gov/).
Paper filing may be used where appropriate, but must be accompanied
by a motion explaining the need for non-electronic filing. Based upon
experience with contested cases, the Board does not expect to receive
many requests to file paper submissions. Circumstances where a paper
filing may be warranted include those occasions where the Office's
electronic filing system is unable to accept filings. Alternatively, if
a problem with electronic filing arises during normal business hours, a
party may contact the Board and request a one-day extension of time for
due dates that are set by rule or orders of the Board.
D. Mandatory Notices
The rules require that parties to a proceeding provide certain
mandatory notices, including identification of the real parties in
interest, related matters, lead and back-up counsel and service
information. Proposed § 42.8. Where there is a change of
information, a party must file a revised notice within 21 days of the
change. Proposed § 42.8(a)(3).
1. Real Party in Interest or privy: The identification of the real
party in interest helps the Office identify potential conflicts of
interests and helps identify potential statutory bars.
Whether a party who is not a named participant in a given
proceeding nonetheless constitutes a "real party in interest" or
"privy" to that proceeding is a highly fact-dependent question. See
generally Taylor v. Sturgell, 553 U.S. 880 (2008); 18A Charles Alan
Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice &
Procedure Sec. § 4449, 4451 (2d ed. 2011). Such questions will be
handled by the Board on a case-by-case basis taking into consideration
how courts have viewed the terms "real party in interest" and
"privy." See, e.g., Taylor, 553 U.S. at 893-895 and 893 n.6 (noting
that "[t]he list that follows is meant only to provide a framework
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[for the decision], not to establish a definitive taxonomy").
While there are multiple bases upon which a non-party may be
recognized as a "real party in interest" or "privy," a common
consideration is whether the non-party exercised or could have
exercised control over a party's participation in a proceeding. See,
e.g., Id. at 895; see generally Wright & Miller § 4451. The concept
of control generally means that "it should be enough that the nonparty
has the actual measure of control or opportunity to control that might
reasonably be expected between two formal coparties." Wright & Miller
§ 4451. Courts and commentators agree, however, that there is no
"bright-line test" for determining the necessary quantity or degree
of participation to qualify as a "real party in interest" or
"privy" based on the control concept. Gonzalez v. Banco Cent. Corp.,
27 F.3d 751, 759 (1st Cir. 1994). See also Wright & Miller § 44512
("The measure of control by a nonparty that justifies preclusion
cannot be defined rigidly."). Accordingly, the proposed rules do not
enumerate particular factors regarding a "control" theory of "real
party in interest" or "privy" under the statute.
Many of the same considerations that apply in the context of "res
judicata" will likely apply in the "real party in interest" or
"privy" contexts. See Gonzalez, 27 F.3d at 759; see generally Wright
& Miller § 4451. Other considerations may also apply in the unique
context of statutory estoppel. See generally, e.g., In re Arviv
Reexamination Proceeding, Control No. 95/001,526, Decision Dismissing
§ 1.182 and § 1.183 Petitions, at 6 (Apr. 18, 2011); In re
Beierbach Reexamination Proceeding, Control No. 95/000,407, Decision on
§ 1.182 and § 1.183 Petitions, at 6 (July 28, 2010); In re
Schlecht Inter Partes Reexamination Proceeding, Control No. 95/001,206,
Decision Dismissing Petition, at 5 (June 22, 2010); In re Guan Inter
Partes Reexamination Proceeding, Control No. 95/001,045, Decision
Vacating Filing Date, at 8 (Aug. 25, 2008).
2. Related Matters: Parties to a proceeding are to identify any
other judicial or administrative matter that would affect, or be
affected by, a decision in the proceeding. Judicial matters include
actions involving the patent in federal court. Administrative matters
that would be affected by a decision in the proceeding include every
application and patent claiming, or which may claim, the benefit of the
priority of the filing date of the party's involved patent or
application as well as any ex parte and inter partes reexaminations for
an involved patent.
3. Identification of service information: Parties are required to
identify service information to allow for efficient communication
between the Board and the parties. Additionally, while the Board is
authorized to provide notice by means other than mailing to the
correspondence address of record, it is ultimately the responsibility
of the applicant or patent owner to maintain a proper correspondence
address in the record. Ray v. Lehman, 55 F.3d 606, 610 (Fed. Cir.
1995).
E. Public Availability and Confidentiality
The proposed rules aim to strike a balance between the public's
interest in maintaining a complete and understandable file history and
the parties' interest in protecting truly sensitive information.
1. Public availability: The record of a proceeding, including
documents and things, shall be made available to the public, except as
otherwise ordered. Proposed § 42.14. Accordingly, a document or
thing will be made publicly available, unless a party files a motion to
seal, which is granted by the Board.
2. Confidential information: The rules identify confidential
information in a manner consistent with Federal Rule of Civil Procedure
26(c)(1)(G), which provides for protective orders for trade secret or
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other confidential research, development or commercial information.
Proposed § 42.54.
3. Motion to seal: A party intending a document or thing to be
sealed may file a motion to seal the document or thing. Proposed
§ 42.14. The document or thing will be provisionally sealed on receipt of
the motion and remain so pending the outcome of the decision on motion.
4. Protective orders: A party from whom discovery of confidential
information is sought may file a motion to seal where the motion
contains a proposed protective order. Proposed § 42.54.
Specifically, protective orders may be issued for good cause by the
Board to protect a party from disclosing confidential information.
Proposed § 42.54. Guidelines on proposing a protective order in a
motion to seal, including a Standing Protective Order, are provided in
Appendix B. The document or thing will be protected on receipt of the
motion and remain so, pending the outcome of the decision on motion.
5. Confidential information in a petition: A petitioner filing
confidential information with a petition may file a motion to seal
concurrent with the petition, where the motion to seal contains a
proposed protective order. The confidential information may be served
to the patent owner under seal. The patent owner may only access the
sealed information if it agrees to the terms of the proposed protective
order. The institution of the proceeding will constitute a grant of the
motion to seal unless otherwise ordered by the Board. Proposed § 42.55.
The proposed rule seeks to streamline the process of seeking
protective orders prior to the institution of the review while
balancing the need to protect confidential information against an
opponent's ability to access information used to challenge the
opponent's claims.
6. Expungement of confidential information: Confidential
information that is subject to a protective order ordinarily would
become public 45 days after denial of a petition to institute a trial
or 45 days after final judgment in a trial. There is an expectation
that information will be made public where the existence of the
information is referred to in a decision to grant or deny a request to
institute a review or is identified in a final written decision. A
party seeking to maintain the confidentiality of information, however,
may file a motion to expunge the information from the record prior to
the information becoming public. Proposed § 42.56. The rule
balances the needs of the parties to submit confidential information
with the public interest in maintaining a complete and understandable
file history for public notices purposes. The rule encourages parties
to redact sensitive information, where possible, rather than seeking to
seal entire documents.
F. Discovery
Discovery is a tool to develop a fair record and to aid the Board
in assessing the credibility of witnesses. To streamline the
proceedings, the rules and Scheduling Order provide a sequenced
discovery process upon institution of the trial. Specifically, each
party will be provided respective discovery periods, with the patent
owner going first. The sequenced discovery allows parties to conduct
meaningful discovery before they are required to submit their
respective motions and oppositions. Thus, discovery before the Board is
focused on what the parties reasonably need to respond to the grounds
raised by an opponent. In this way, the scope of the trial continually
narrows.
1. Routine discovery: Routine discovery includes: (1) Production of
any exhibit cited in a paper or testimony, (2) the cross examination of
the other sides declarant, and (3) information that is inconsistent
with a position advanced during the proceeding. Routine discovery
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places the parties on a level playing field and streamlines the
proceeding. Board authorization is not required to conduct routine
discovery, although the Board will set the times for conducting this
discovery in its Scheduling Order.
2. Additional discovery: A request for additional discovery must be
in the form of a motion, although the parties may agree to discovery
amongst themselves. The standard for granting such requests varies with
the proceeding. An "interests of justice" standard applies in IPR and
derivations, whereas the more liberal "good cause" standard applies
in PGR and CBM. An additional discovery request could be granted under
either standard, for example, when a party raises an issue where the
evidence on that issue is uniquely in the possession of the party that
raised it.
3. Compelled testimony: A party can request authorization to compel
testimony under 35 U.S.C. 24. If a motion to compel testimony is
granted, testimony may be (1) ex parte, subject to subsequent cross
examination, or (2) inter partes. Therriault v. Garbe, 53 USPQ2d 1179,
1184 (BPAI 1999). Prior to moving for or opposing compelled testimony,
the parties should discuss which procedure is appropriate.
4. Live testimony: Cross-examination may be ordered to take place
in the presence of an administrative patent judge. Occasionally, the Board
will require live testimony where the Board considers the demeanor of a
witness critical to assessing credibility. Examples of where such testimony
has been ordered in contested cases before the Board include cases where
derivation or inequitable conduct is an issue or where testimony is given
through an interpreter.
5. Times and locations for taking cross examination: The rules do
not provide specific time limits for cross examination. The Board
expects to handle such issues via an Order requiring the parties to
confer to reach agreement on reasonable times, dates, and locations for
cross examination of witnesses.
The Board has issued such Orders in contested cases and has not
experienced problems arising from such Orders.
II. Petitions and Motions Practice
A. General Motions Practice Information
1. Motions practice: The proceedings begin with the filing of a
petition that lays out the petitioner's grounds and supporting evidence
for the requested proceeding. Additional relief in a proceeding must be
requested in the form of a motion. Proposed § 42.20(a).
2. Prior authorization: Generally, a motion will not be entered
without prior Board authorization. Proposed § 42.20(b). Exceptions
include motions where it is impractical for a party to seek prior Board
authorization and motions for which authorization is automatically
granted. Motions where it is not practical to seek prior Board
authorization include motions to seal and motions filed with a
petition, such as motions to waive page limits. Motions where
authorization is automatically granted include requests for rehearing,
observations on cross-examination, and motions to exclude evidence. The
Board expects that the Scheduling Order will pre-authorize and set
times for the filing of observations on cross-examination and motions
to exclude evidence based on inadmissibility. See Appendix A,
Scheduling Order.
Typically, authorization for a motion is obtained during an initial
conference call, which generally occurs within one month of the
institution of IPR, PGR, CBM, and derivation proceedings. Additionally,
where more immediate relief is required or the request arises after the
initial conference call, a party should institute a conference call to
obtain such authorization. The Board has found that this practice
simplifies a proceeding by focusing the issues early, reducing costs
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and efforts associated with motions that are beyond the scope of the
proceeding. By taking an active role in the proceeding, the Board can
eliminate delay in the proceeding and ensure that attorneys are
prepared to resolve the relevant disputed issues.
3. Page Limits: Petitions, motions, oppositions, and replies filed
in a proceeding are subject to page limits in order to streamline the
proceedings. Proposed § 42.24. The rules set a limit of 50 pages
for petitions requesting inter partes reviews and derivation
proceedings, 70 pages for petitions requesting post-grant review and
covered business method patent reviews, and 15 pages for motions.
Proposed § 42.24(a). Oppositions are limited to an equal number of
pages as the corresponding motion. Proposed § 42.24(b). Replies to
petitions are limited to 15 pages and replies to motions are limited to
5 pages. Proposed § 42.24(c).
Federal courts routinely use page limits to manage motions practice
as "[e]ffective writing is concise writing." Spaziano v. Singletary,
36 F.3d 1028, 1031 n.2 (11th Cir. 1994). Federal courts have found that
page limits ease the burden on both the parties and the courts, and
patent cases are no exception. Broadwater v. Heidtman Steel Prods.,
Inc., 182 F. Supp. 2d 705, 710 (S.D. Ill. 2002) ("Counsel are strongly
advised, in the future, to not ask this Court for leave to file any
memoranda (supporting or opposing dispositive motions) longer than 15
pages. The Court has handled complicated patent cases and employment
discrimination cases in which the parties were able to limit their
briefs supporting and opposing summary judgment to 10 or 15 pages.").
Although parties are given wide latitude in how they present their
cases, the Board's experience is that the presentation of an
overwhelming number of issues tends to detract from the argument being
presented, and can cause otherwise meritorious issues to be overlooked
or misapprehended. Thus, parties should avoid submitting a repository
of all the information that a judge could possibly consider, and
instead focus on simple, well organized, easy to follow arguments
supported by readily identifiable evidence of record. Another factor to
keep in mind is that the judges of the Board are familiar with the
general legal principles involved in issues which come before the
Board. Accordingly, extended discussions of general patent law
principles are not necessary.
4. Testimony Must Disclose Underlying Facts or Data: The Board
expects that most petitions and motions will rely upon affidavits of
experts. Affidavits expressing an opinion of an expert must disclose
the underlying facts or data upon which the opinion is based. See Fed.
R. Evid. 705; and proposed § 42.65. Opinions expressed without
disclosing the underlying facts or data may be given little or no
weight. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed.
Cir. 1997) (nothing in the Federal Rules of Evidence or Federal Circuit
jurisprudence requires the fact finder to credit unsupported assertions
of an expert witness).
5. Tests and Data: Parties often rely on scientific tests and data
to support their positions. Examples include infra-red spectroscopy
graphs, high-performance liquid-chromatography data, etc. In addition
to providing the explanation required in proposed § 42.65, a party
relying on the test should provide any other information the party
believes would assist the Board in understanding the significance of
the test or the data.
6. Secondary Indicia of Nonobviousness: The Board expects that most
petitions will raise issues of obviousness. In determining whether the
subject matter of a claim would have been obvious over the prior art,
the Board may review objective evidence of secondary considerations.
B. Petition
Proceedings begin with the filing of a petition. The petition lays
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out the petitioner's grounds and supporting evidence, on a challenged
claim-by-claim basis, for instituting the requested proceeding.
1. Filing date - Minimum Procedural Compliance: To obtain a filing
date, the petition must meet certain minimum standards. Generally, the
standards required for a petition are those set by statute for the
proceeding requested. For example, an IPR requires that a complete
petition be filed with the required fee, and include a certificate of
service for the petition, fee, and evidence relied upon. Proposed
§ 42.106. A complete petition for IPR requires that the petitioner
certify that the patent is eligible for inter partes review and that
the petitioner is not barred or estopped from requesting the review,
and must identify the claims being challenged and the specific basis
for the challenge. Proposed § 42.104. Similar petition requirements
apply to PGR (proposed § 42.204) and derivations (proposed § 42.404).
CBM reviews also require a petition demonstrate that the patent for
which review is sought is a covered business method patent.
Proposed § 42.304.
2. Burden of Proof for Statutory Institution Thresholds: The burden
of proof in a proceeding before the Board is a preponderance of the
evidence. Proposed § 42.1(d).
3. Specific Requirements for Petition: A petitioner must certify
that the patent or application is available for review and that the
petitioner is not barred or estopped from seeking the proceeding.
Proposed §§ 42.104, 42.204, 42.304, and 42.405. Additionally, a
petitioner must identify all the claims that are challenged and the
specific statutory grounds on which the challenge to the claim is
based, provide a claim construction for the challenged claims, and
state the relevance of the evidence to the issues raised. Id. For IPR,
PGR, and CBM proceedings, a petitioner must also identify how the
construed claim is unpatentable over the relevant evidence.
4. Covered Business Method/Technological Invention: A petitioner in
a CBM proceeding must demonstrate that the patent for which review is
sought is a covered business method patent. Proposed § 42.304(a).
Covered business method patents do not include patents for
technological inventions.
The following claim drafting techniques would not typically render
a patent a technological invention:
(a) Mere recitation of known technologies, such as computer
hardware, communication or computer networks, software, memory,
computer-readable storage medium, scanners, display devices or
databases, or specialized machines, such as an ATM or point of sale
device.
(b) Reciting the use of known prior art technology to accomplish a
process or method, even if that process or method is novel and non-
obvious.
(c) Combining prior art structures to achieve the normal, expected,
or predictable result of that combination.
The following are examples of covered business method patents that
are subject to a CBM review proceeding:
(a) A patent that claims a method for hedging risk in the field
of commodities trading.
(b) A patent that claims a method for verifying validity of a
credit card transaction.
The following are examples of patents that claim a technological
invention that would not be subject to a CBM review proceeding:
(a) A patent that claims a novel and non-obvious hedging machine
for hedging risk in the field of commodities trading.
(b) A patent that claims a novel and non-obvious credit card
reader for verifying the validity of a credit card transaction.
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5. General Practice Tips:
Claim Charts. While not required, a petitioner may file a claim
chart to explain clearly and succinctly what the petitioner believes a
claim means in comparison to something else, such as another claim, a
reference, or a specification. Where appropriate, claim charts can
streamline the process of identifying key features of a claim and
comparing those features with specific evidence. Claim charts submitted
as part of a petition or motion count towards applicable page limits. A
claim chart from another proceeding that is submitted as an exhibit,
however, will not count towards page limits.
C. Preliminary Patent Owner Response
For IPR, PGR, and CBM proceedings, a patent owner may file a
preliminary response no later than two months after the grant of a
filing date. Proposed §§ 42.107(b) and 42.207(b). The
preliminary response may present evidence other than testimonial
evidence to demonstrate that no review should be instituted. Proposed
§§ 42.107(c) and 42.207(c).
Potential preliminary responses include:
(1) The petitioner is statutorily barred from pursuing a review.
(2) The references asserted to establish that the claims are
unpatentable are not in fact prior art.
(3) The prior art lacks a material limitation in all of the
independent claims.
(4) The prior art teaches or suggests away from a combination that
the petitioner is advocating.
(5) The petitioner's claim interpretation for the challenged claims
is unreasonable.
(6) If a petition for post-grant review raises 35 U.S.C. 101
grounds, a brief explanation as to how the challenged claims are
directed to a patent-eligible invention.
Where a patent owner seeks to expedite the proceeding, the patent
owner may file an election to waive the preliminary patent owner
response. Proposed §§ 42.107(b) and 42.207(b). No adverse
inference will be taken by such an election. Moreover, a patent owner
may file a statutory disclaimer of one or more challenged claims to
streamline the proceedings. Where no challenged claims remain, the
Board would terminate the proceeding. Where one or more challenged
claims remain, the Board's decision on institution would be based
solely on the remaining claims. See Sony v. Dudas, 2006 WL 1472462
(E.D.Va. 2006).
D. Institution of Review
1. Statutory Threshold Requirements: Generally, the Director may
institute a proceeding where a petitioner meets the threshold
requirements, although each proceeding has a different threshold
requirement for institution. Each of the statutory threshold
requirements are summarized below.
(a) Inter Partes Review: 35 U.S.C. 314(a), as amended, provides
that the Director may not authorize institution of an inter partes
review, unless the Director determines that the information presented
in the petition filed under 35 U.S.C. 311, as amended, and any response
filed under 35 U.S.C. 313, as amended, shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least
one of the claims challenged in the petition. The "reasonable
likelihood" standard is a somewhat flexible standard that allows the
judge room for the exercise of judgment.
(b) Post-Grant Review: 35 U.S.C. 324(a) provides that the Director
may not authorize institution of a post-grant review, unless the
Director determines that the information presented in the petition
filed under 35 U.S.C. 321, if such information is not rebutted, would
demonstrate that it is more likely than not that at least one of the
claims challenged in the petition is unpatentable. 35 U.S.C. 324(b)
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provides that the determination required under 35 U.S.C. 324(a) may
also be satisfied by a showing that the petition raises a novel or
unsettled legal question that is important to other patents or patent
applications.
(c) Covered Business Method Patent Review: Section 18(a)(1) of the
AIA provides that the transitional proceeding for covered business
method patents will be regarded as, and will employ the standards and
procedures of, a post-grant review under chapter 32 of title 35 United
States Code, subject to certain exceptions. Section 18(a)(1)(B) of the
Leahy-Smith America Invents Act specifies that a person may not file a
petition for a transitional proceeding with respect to a covered
business method patent, unless the person or person's real party in
interest or privy has been sued for infringement of the patent or has
been charged with infringement under that patent. A covered business
method patent means a patent that claims a method or corresponding
apparatus for performing data processing or other operations used in
the practice, administration, or management of a financial product or
service. Covered business method patents do not include patents for
technological inventions.
(d) Derivation: 35 U.S.C. 135(a), as amended, provides that an
applicant for a patent may file a petition to institute a derivation
proceeding. 35 U.S.C. 135(a), as amended, provides that the petition must
state with particularity the basis for finding that a named inventor
in the earlier application derived the claimed invention from an inventor
named in the petitioner's application and, without authorization, filed
the earlier application. The petition must be filed within one year of
the first publication by the earlier applicant of a claim to the same
or substantially the same invention, must be made under oath, and must
be supported by substantial evidence. 35 U.S.C. 135(a), as amended,
also provides that the Director may institute a derivation proceeding,
if the Director determines that the petition demonstrates that the
standards for instituting a derivation proceeding are met.
2. Considerations in Instituting a Review: The Board institutes the
trial on behalf of the Director. Proposed § 42.4(a). In instituting
the trial, the Board will consider whether or not a party has satisfied
the statutory institution requirements. As part of its consideration,
the Board may take into account the existence of another proceeding
before the Board under 35 U.S.C. 315(d), as amended, and whether the
same or substantially the same prior art or arguments were previously
presented to the Office under 35 U.S.C. 325(d).
3. Content of Decision on Whether to Institute: In instituting a
trial, the Board will streamline the issues for final decision by
authorizing the trial to proceed only on the challenged claims for
which the threshold requirements for the proceeding have been met. The
Board will identify the grounds the trial will proceed upon on a claim-
by-claim basis. Any claim or issue not included in the authorization
for review is not part of the trial.
The Board expects that a Scheduling Order (Appendix A) will be
provided concurrent with the decision to institute the proceeding. The
Scheduling Order will set due dates for taking action accounting for
the complexity of the proceeding but ensuring that the trial is
completed within one year of institution.
Where no trial is instituted, a decision to that effect will be
provided. The Board expects that the decision will contain a short
statement as to why the requirements were not met, although this may
not be necessary in all cases. A party dissatisfied with a decision may
file a request for rehearing before the Board, but the Board's
determination on whether to institute a trial is final and
nonappealable. 35 U.S.C. 135(a) and 314(d), as amended, 35 U.S.C.
324(e); and proposed § 42.71(c).
E. Initial Conference Call (One Month After Instituting Trial)
The Board expects to initiate a conference call within about one
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month from the date of institution of the trial to discuss the
Scheduling Order and any motions that the parties anticipate filing
during the trial. Generally, the Board would require a list of proposed
motions to be filed no later than two business days prior to the
conference call. An accurate motions list is necessary to provide the
Board and the opposing parties adequate notice to prepare for the
conference call and to plan for the proceeding. The Board's contested
cases experience demonstrates that discussing the proposed motions aids
the administration of justice by (1) helping the Board and counsel
adjust the schedule for taking action, (2) permitting the Board to
determine whether the listed motions are both necessary and sufficient
to resolve the issues raised, and (3) revealing the possibility that
there may be a dispositive issue that may aid the settlement of the
trial. Submission of a list would not preclude the filing of additional
motions not contained in the list. However, the Board may require prior
authorization to file an additional motion and the set times are not
likely to change as a consequence of the new motion.
F. Patent Owner Response
For IPR, PGR, and CBM, the patent owner will be provided an
opportunity to respond to the petition once a trial has been
instituted. 35 U.S.C. 316(a)(8), as amended, and 35 U.S.C. 326(a)(8).
For a derivation proceeding, the applicant or patent owner alleged to
have derived the invention will be provided an opportunity to respond
to the petition once the trial has been instituted, App. A-2,
Scheduling Order.
The response is filed as an opposition to the petition and is
subject to the page limits for oppositions. Proposed §§ 42.120
and 42.220. The response should identify all the involved claims that
are believed to be patentable and state the basis for that belief.
Additionally, the response should include any affidavits or additional
factual evidence sought to be relied upon and explain the relevance of
such evidence. As with the petition, the response may contain a claim
chart identifying key features of a claim and comparing those features
with specific evidence. Where the patent owner elects not to file a
response, the patent owner will arrange for a conference call with the
Board to discuss whether or not the patent owner is abandoning the
contest.
G. Amendments
1. IPR, PGR, and CBM Amendments: Patent owners in IPR, PGR and CBM
may file amendments subject to certain conditions. Only one motion to
amend will be permitted, absent a joint request by the petitioner and
patent owner to materially advance settlement of the proceeding, or
upon the request of the patent owner for good cause showing. 35 U.S.C.
316(d)(1), as amended, and 35 U.S.C. 326(d)(1). Patent owners seeking
to amend their claims would identify their intent to file such a motion
in a conference call with the Board. During the call, the patent owner
will be expected to identify the number and general scope of substitute
claims that would be filed in the motion to amend. Proposed §§ 42.121(a)
and 42.221(a). A patent owner will not be required to identify a fully
developed claim set.
2. Amendments in Derivation Proceedings: The filing of an amendment
by a petitioner or respondent in a derivation proceeding will be
authorized upon a showing of good cause. An example of good cause is
where the amendment materially advances settlement between the parties
or seeks to cancel claims. The Board expects, however, that requests to
cancel all of a party's disputed claims will be treated as a request
for adverse judgment.
3. General Practice Tips on Amendments: Amendments are expected to
be filed at the due dates set for filing a patent owner response or
respondent opposition to a petition. For amendments sought later in the
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proceeding, a demonstration of good cause will be required. Amendments
filed late in the proceeding may impair a petitioner's ability to mount
a full response in time to meet the statutory deadline for the
proceeding. Hence, in evaluating good cause, the Board will take into
account the timing of the submission with requests made earlier in the
proceeding requiring less compelling reasons than would be required for
amendments later in the proceeding. Cancellation of claims, however,
will generally be permitted even late in the proceeding as will
amendments seeking to correct simple and obvious typographical error to
reduce the number of issues in dispute.
Amendments should clearly state "original," "cancelled,"
"replaced by proposed substitute," or "proposed substitute for
original claim X."
Amendments should clearly state where the specification and any
drawings disclose all the limitations in the proposed substitute claims.
If the Board is unable to determine how the specification and drawings
support the proposed substitute claims, entry of the amendment will not
be permitted.
Amendments should clearly state the patentably distinct features
for proposed substitute claims. This will aid the Board in determining
whether the amendment narrows the claims and if the amendment is
responsive to the grounds of unpatentability involved in the trial.
The number of substitute claims must be "reasonable." There is a
general presumption that only one substitute claim would be needed to
replace each challenged claim. This presumption may be rebutted by a
demonstration of need. The presumption balances the one-year timeline
for final decision against the patent owner's need to appropriately
define their invention.
H. Petitioner Opposition to Amendment
A petitioner will be afforded an opportunity to fully respond to a
patent owner's amendment. The time for filing an opposition will
generally be set in a Scheduling Order. No authorization is needed to
file an opposition to an amendment. Petitioners may supplement evidence
submitted with their petition to respond to new issues arising from
proposed substitute claims. This includes the submission of new expert
declarations that are directed to the proposed substitute claims.
I. Petitioner Reply to Patent Owner Response and Reply to Opposition To
Amend
A reply may only respond to arguments raised in the corresponding
opposition. Proposed § 42.23. While replies can help crystalize
issues for decision, a reply that raises a new issue or belatedly
presents evidence will not be considered and may be returned. The Board
will not attempt to sort proper from improper portions of the reply.
Examples of indications that a new issue has been raised in a reply
include new evidence necessary to make out a prima facie case for the
patentability or unpatentability of an original or proposed substitute
claim, and new evidence that could have been presented in a petition or
amendment.
J. Additional Motions
There are many types of motions that may be filed in a proceeding
in addition to motions to amend. Examples of additional motions include
motions to exclude evidence, motions to seal, motions for joinder,
motions to file supplemental information, motions for judgment based on
supplemental information, motions for observations on cross-
examination, etc.
Where a party believes it has a basis to request relief on a ground
not identified in the rules, the party should contact the Board and
arrange for a conference call to discuss the requested relief with the
judge handling the proceeding.
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K. Oral Argument
Each party to a proceeding will be afforded an opportunity to
present their case before at least three members of the Board. The time
for requesting an oral argument is normally set in the Scheduling Order
but may be modified on a case-by-case basis.
Generally, a petitioner to a hearing will go first followed by the
patent owner or respondent after which a rebuttal may be given by the
petitioner. The order may be reversed, e.g., where the only dispute is
whether the patent owner's proposed substitute claims overcome the
grounds for unpatentability set forth in the petition.
Special equipment or needs. A party should advise the Board as soon
as possible before an oral argument of any special needs. Examples of
such needs include additional space for a wheelchair, an easel for
posters, or an overhead projector. Parties should not make assumptions
about the equipment the Board may have on hand. Such requests should be
directed in the first instance to a Board Trial Section paralegal at
(571) 272-9797.
Demonstrative exhibits. The Board has found that elaborate
demonstrative exhibits are more likely to impede than help an oral
argument. The most effective demonstrative exhibits tend to be a
handout or binder containing the demonstrative exhibits. The pages of
each exhibit should be numbered to facilitate identification of the
exhibits during the hearing, particularly if the hearing is recorded.
Live testimony. The Board does not expect live testimony at oral
argument.
No new evidence and arguments. A party may rely upon evidence that
has been previously submitted in the proceeding and may only present
arguments relied upon in the papers previously submitted. No new
evidence or arguments may be presented at the oral hearing.
L. Settlement
There are strong public policy reasons to favor settlement between
the parties to a proceeding. The Board will be available to facilitate
settlement discussions, and where appropriate, may require a settlement
discussion as part of the proceeding. The Board expects that a
proceeding will terminate after the filing of a settlement agreement,
unless the Board has already decided the merits of the proceeding.
M. Final Decision
For IPR, PGR and CBM, the Board will enter a final written decision
not more than one year from the date a trial is instituted, except that
the time may be extended up to six months for good cause. The Board
expects that a final written decision will address the issues necessary
for resolving the proceedings.
In the case of derivation proceedings, although not required by
statute, the Board expects to provide a final decision not more than
one year from the institution of the proceeding. The Board will provide
a final decision as to whether an inventor named in the earlier
application derived the claimed invention from an inventor named in the
petitioner's application and filed the earlier application claiming
such invention without authorization.
N. Rehearing Requests
A party dissatisfied with a decision of the Board may file a
request for rehearing. Proposed § 42.71. The burden of showing that
a decision should be modified lies with the party challenging the
decision. The request must specifically identify all matters the party
believes the Board misapprehended or overlooked, and where each matter
was previously addressed in a motion, an opposition, or a reply.
Evidence not already of record at the time of the decision will not be
admitted absent a showing of good cause.
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Appendix A-1: Scheduling Order for Inter Partes Review, Post-Grant
Review, and Covered Business Method Patents Review (Based on the
Proposed Trial Rules)
A. Due Dates
This order sets due dates for the parties to take action after
institution of the proceeding. The parties may stipulate different
dates for Due Dates 1 through 5 (earlier or later, but no later than
Due Date 6). A notice of the stipulation, specifically identifying
the changed due dates, must be promptly filed. The parties may not
stipulate an extension of Due Dates 6-7.
In stipulating different times, the parties should consider the
effect of the stipulation on times to object to evidence (proposed
§ 42.64(b)(1)), to supplement evidence (proposed § 42.64(b)(2)),
to conduct cross examination, and to draft papers depending on the
evidence and cross examination testimony (see section B, below).
1. Due Date 1
The patent owner is not required to file anything in response to
the petition. The patent owner may file -
a. A response to the petition, and
b. A motion to amend the patent, if authorized.
Any response or amendment must be filed by Due Date 1. If the
patent owner elects not to file anything, the patent owner must
arrange a conference call with the parties and the Board.
2. Due Date 2
Any reply to the patent owner's response and opposition to
amendment filed by petitioner under proposed § 42.23 must be
filed by this date.
3. Due Date 3
The patent owner must file any reply to the petitioner's
opposition by this date.
4. Due Date 4
a. The petitioner must file any motion for an observation on the
cross examination testimony of a reply witness (see section C,
below). Proposed § 42.20.
b. Each party must file any motion to exclude evidence (proposed
§ 42.64(c)) and any request for oral argument (proposed § 42.70(a)).
5. Due Date 5
a. The patent owner must file any response to a petitioner
observation on cross examination testimony.
b. Each party must file any opposition to a motion to exclude.
6. Due Date 6
Each party must file any reply for a motion to exclude.
B. Cross Examination
Except as the parties might otherwise agree, for each due date -
1. Cross examination begins after any supplemental evidence is
due (proposed § 42.64(b)).
2. Cross examination ends five business days before the next due
date (proposed § 42.64(b)).
C. Motion for Observation on Cross Examination
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A motion for observation on cross examination provides the
petitioner with a mechanism to draw the Board's attention to
relevant cross examination testimony of a reply witness, since no
further substantive paper is permitted after the reply. The
observation must be a concise statement of the relevance of the
precisely identified testimony to a precisely identified argument or
portion of an exhibit. Each observation should not exceed a single,
short paragraph. The patent owner may respond to the observation.
Any response must be equally concise and specific.
Due Date Appendix
Due Date 1 4 months.
Patent owner post-institution
response to the petition
Patent owner post-institution
motion to amend patent
Due Date 2 2 months.
Petitioner reply to patent
owner response
Petitioner opposition to
patent owner amendment
Due Date 3 1 month.
Patent owner reply to
petitioner opposition
Due Date 4 3 weeks.
Petitioner motion for
observation regarding cross
examination of reply witness
Motion to exclude
Request for oral argument
Due Date 5 2 weeks.
Patent owner response to
observation
Opposition to motion to exclude
Due Date 6 1 week.
Reply to opposition to motion
to exclude
Due Date 7 Set on request.
Oral argument
Appendix A-2: Scheduling Order for Derivation Proceedings
(Based on the Proposed Trial Rules)
A. Due Dates
This order sets due dates for the parties to take action in this
proceeding. The parties may stipulate different dates for Due Dates
1 through 5 (earlier or later, but not later than Due Date 6). A
notice of the stipulation, specifically identifying the changed due
dates, must be promptly filed. The parties may not stipulate an
extension of Due Dates 6-7.
In stipulating different times, the parties should consider the
effect of the stipulation on times to object to evidence (proposed
§ 42.64 (b)(1)), to supplement evidence (proposed § 42.64(b)(2)),
to conduct cross examination, and to draft papers depending on the
evidence and cross examination testimony (see section B, below).
1. Due Date 1
The respondent is not required to file anything in response to
the petition. The respondent may file -
a. A response to the petition, and
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b. A motion to amend, if authorized.
Any such response or motion to amend must be filed by Due Date
1. If the respondent elects not to file anything, the respondent
must arrange a conference call with the parties and the Board.
2. Due Date 2
The petitioner must file any reply to the respondent's response
and opposition to amendment.
3. Due Date 3
The respondent must file any reply to the petitioner's
opposition by this date.
4. Due Date 4
a. The petitioner must file any observation on the cross
examination testimony of a reply witness (see section C, below).
b. Each party must file any motion to exclude evidence (proposed
§ 42.64(c)) and any request for oral argument (proposed § 42.70(a)).
5. Due Date 5
a. The respondent must file any response to a petitioner
observation on cross examination testimony.
b. Each party must file any opposition to a motion to exclude.
6. Due Date 6
Each party must file any reply for a motion to exclude.
B. Cross Examination
Except as the parties might otherwise agree, for each due date -
1. Cross examination begins after any supplemental evidence is
due (proposed § 42.64(b)(2)).
2. Cross examination ends five business days before the next due
date.
C. Motion for Observation on Cross Examination
A motion for observation on cross examination provides the
petitioner with a mechanism to draw the Board's attention to
relevant cross examination testimony of a reply witness, since no
further substantive paper is permitted after the reply. The
observation must be a concise statement of the relevance of the
precisely identified testimony to a precisely identified argument or
portion of an exhibit. Each observation should not exceed a single,
short paragraph. The patent owner may respond to the observation. Any
response must be equally concise and specific.
Due Date Appendix
Due Date 1 4 months.
Respondent post-institution
response to the petition
Respondent post-institution
motion to amend
Due Date 2 2 months.
Petitioner reply to
Respondent response
Petitioner opposition to
Respondent amendment
Due Date 3 1 month.
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Respondent reply to
petitioner opposition
Due Date 4 3 weeks.
Petitioner motion for
observation regarding
cross examination of
reply witness
Motion to exclude
Request for oral argument
Due Date 5 2 weeks.
Respondent response to
observation
Opposition to motion to exclude
Due Date 6 1 week.
Reply to opposition to motion to
exclude
Due Date 7 Set on request.
Oral argument
Appendix B: Protective Order Guidelines
(Based on the Proposed Trial Rules)
(a) Purpose. This document provides guidance on the procedures
for filing of motions to seal and the entry of protective orders in
proceedings before the Board. The protective order governs the
protection of confidential information contained in documents,
discovery, or testimony adduced, exchanged, or filed with the Board.
The parties are encouraged to agree on the entry of a stipulated
protective order. Absent such agreement, the default standing
protective order will be automatically entered.
(b) Timing; lifting or modification of the Protective Order. The
terms of a protective order take effect upon the filing of a Motion
to Seal by a party, and remain in place until lifted or modified by
the Board either on the motion of a party for good cause shown or
sua sponte by the Board.
(c) Protective Order to Govern Treatment of Confidential
Information. The terms of a protective order govern the treatment of
the confidential portions of documents, testimony, and other
information designated as confidential, as well as the filing of
confidential documents or discussion of confidential information in
any papers filed with the Board. The Board shall have the authority
to enforce the terms of the Protective Order, to provide remedies
for its breach, and to impose sanctions on a party and a party's
representatives for any violations of its terms.
(d) Contents. The Protective Order shall include the following
terms:
(1) Designation of Confidential Information. The producing party
shall have the obligation to clearly mark as "PROTECTIVE ORDER
MATERIAL" any documents or information considered to be
confidential under the Protective Order.
(2) Persons Entitled to Access to Confidential Information. A
party receiving confidential information shall strictly restrict
access to that information to the following individuals who first
have signed and filed an Acknowledgement as provided herein:
(A) Parties. Persons who are owners of a patent involved in the
proceeding and other persons who are named parties to the
proceeding.
(B) Party Representatives. Representatives of record for a party
in the proceeding.
(C) Experts. Retained experts of a party in the proceeding who
further certify in the Acknowledgement that they are not a
competitor to any party, or a consultant for, or employed by, such a
competitor with respect to the subject matter of the proceeding.
(D) In-house counsel. In-house counsel of a party.
(E) Other Employees of a Party. Employees, consultants, or other
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persons performing work for a party, other than in-house counsel and
in-house counsel's support staff, who sign the Acknowledgement,
shall be extended access to confidential information only upon
agreement of the parties or by order of the Board upon a motion
brought by the party seeking to disclose confidential information to
that person. The party opposing disclosure to that person shall have
the burden of proving that such person should be restricted from
access to confidential information.
(F) The Office. Employees and representatives of the U.S. Patent
and Trademark Office who have a need for access to the confidential
information shall have such access without the requirement to sign
an Acknowledgement. Such employees and representatives shall include
the Director, members of the Board and staff, other Office support
personnel, court reporters, and other persons acting on behalf of
the Office.
(G) Support Personnel. Administrative assistants, clerical
staff, court reporters, and other support personnel of the foregoing
persons who are reasonably necessary to assist those persons in the
proceeding. Such support personnel shall not be required to sign an
Acknowledgement, but shall be informed of the terms and requirements
of the Protective Order by the person they are supporting who
receives confidential information.
(3) Protection of Confidential Information. Persons receiving
confidential information shall take reasonable care to maintain the
confidentiality of that information, including:
(i) Maintaining such information in a secure location to which
persons not authorized to receive the information shall not have
access;
(ii) Otherwise using reasonable efforts to maintain the
confidentiality of the information, which efforts shall be no less
rigorous than those the recipient uses to maintain the
confidentiality of information not received from the disclosing
party;
(iii) Ensuring that support personnel of the recipient who have
access to the confidential information understand and abide by the
obligation to maintain the confidentiality of information received
that is designated as confidential; and
(iv) Limiting the copying of confidential information to a
reasonable number of copies needed to conduct the proceeding and
maintaining a record of the locations of such copies.
(4) Treatment of Confidential Information. Persons receiving
confidential information shall use the following procedures to
maintain confidentiality of documents and other information -
(A) Documents and Information Filed With the Board.
(i) A party may file documents or information with the Board
under seal, together with a non-confidential description of the
nature of the confidential information that is under seal and the
reasons why the information is confidential and should not be made
available to the public. The submission shall be treated as
confidential and remain under seal, unless upon motion of a party
and after a hearing on the issue, or sua sponte, the Board
determines that the documents or information does not qualify for
confidential treatment.
(ii) Where confidentiality is alleged as to some but not all of the
information submitted to the Board, the submitting party shall file
confidential and non-confidential versions of its submission,
together with a Motion to Seal the confidential version setting
forth the reasons why the information redacted from the non-
confidential version is confidential and should not be made publicly
available. The non-confidential version of the submission shall
clearly indicate the locations of information that has been
redacted. The confidential version of the submission shall be filed
under seal. The redacted information shall remain under seal, unless
upon motion of a party and after a hearing on the issue, or sua
sponte, the Board determines that some or all of the redacted
information does not qualify for confidential treatment.
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(B) Documents and Information Exchanged Among the Parties.
Information designated as confidential that is disclosed to another
party during discovery or other proceedings before the Board shall
be clearly marked as "PROTECTIVE ORDER MATERIAL" and shall be
produced in a manner that maintains its confidentiality.
(5) Confidential Testimony. Any person subject to deposition in
a proceeding may, on the record at the deposition, preliminarily
designate the entirety of the person's testimony and all
transcriptions thereof as Confidential, pending further review.
Within 10 days of the receipt of the transcript of the deposition,
that person, or the person's representative, shall advise the
opposing party of those portions of the testimony to which a claim
of confidentiality is to be maintained, and the reasons in support
of that claim. Such portions shall be treated as confidential and
maintained under seal in any filings to the Board unless, upon
motion of a party and after a hearing on the issue, or sua sponte,
the Board determines that some or all of the redacted information
does not qualify for confidential treatment.
(6) Other Restrictions Imposed By the Board. In addition to the
foregoing, the Board may, in its discretion, include other terms and
conditions in a Protective Order it enters in any proceeding.
(7) Requirement of Acknowledgement. Any person receiving
confidential information during a proceeding before the Board shall,
prior to receipt of any confidential information, first sign an
Acknowledgement, under penalty of perjury, stating the following:
(A) The person has read the Protective Order and understands its
terms;
(B) The person agrees to be bound by the Protective Order and
will abide by its terms;
(C) The person will use the confidential information only in
connection with that proceeding and for no other purpose;
(D) The person shall only extend access to the confidential
information to support personnel, such as administrative assistants,
clerical staff, paralegals and the like, who are reasonably
necessary to assist him or her in the proceeding. The person shall
inform such support personnel of the terms and requirements of the
Protective Order prior to disclosure of any confidential information
to such support personnel and shall be personally responsible for
their compliance with the terms of the Protective Order; and
(E) The person agrees to submit to the jurisdiction of the
Office for purposes of enforcing the terms of the Protective Order
and providing remedies for its breach.
(e) Filing of Executed Protective Order. The party filing a
Motion to Seal shall include with its supporting papers a copy of a
proposed Protective Order, signed by the party or its representative
of record, certifying that the party accepts and agrees to the terms
of the Protective Order. Prior to the receipt of confidential
information, any other party to the proceeding also shall file a
copy of the proposed Protective Order, signed by the party or its
representative of record, certifying that the party accepts and
agrees to the terms of the proposed Protective Order. The proposed
Protective Order shall remain in effect until superseded by a
Protective Order entered by the Board.
(f) Duty To Retain Acknowledgements. Each party to the
proceeding shall maintain a signed Acknowledgement from each person
acting on its behalf who obtains access to confidential information
after signing an Acknowledgement, as set forth herein, and shall
produce such Acknowledgements to the Office upon request.
(g) Motion to Seal. A party may file an opposition to the motion
that may include a request that the terms of the proposed Protective
Order be modified including limiting the persons who are entitled to
access under the Order. Any such opposition shall state with
particularity the grounds for modifying the proposed Protective
Order. The party seeking the modification shall have the burden of
proving that such modifications are necessary. While the motion is
pending, no disclosure of confidential information shall be made to
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the persons for whom disclosure is opposed, but the filing of the
motion shall not preclude disclosure of the confidential information
to persons for whom disclosure is not opposed and shall not toll the
time for taking any action in the proceeding.
(h) Other Proceedings. Counsel for a party who receives
confidential information in a proceeding will not be restricted by
the Board from representing that party in any other proceeding or
matter before the Office. Confidential information received in a
proceeding may not be used in any other PTO proceeding in which the
providing party is not also a party.
(i) Disposal of Confidential Information. Within one month after
final termination of a proceeding, including any appeals, or within
one month after the time for appeal has expired, each party shall
assemble all copies of all confidential information it has received,
including confidential information provided to its representatives
and experts, and shall destroy the confidential information and
provide a certification of destruction to the party who produced the
confidential information.
DEFAULT PROTECTIVE ORDER
The following Standing Protective Order will be automatically
entered into the proceeding upon the filing of a petition for review
or institution of a derivation:
Standing Protective Order
This standing protective order governs the treatment and filing
of confidential information, including documents and testimony.
1. Confidential information shall be clearly marked "PROTECTIVE
ORDER MATERIAL."
2. Access to confidential information is limited to the
following individuals who have executed the acknowledgment appended
to this order:
(A) Parties. Persons who are owners of a patent involved in the
proceeding and other persons who are named parties to the
proceeding.
(B) Party Representatives. Representatives of record for a party
in the proceeding.
(C) Experts. Retained experts of a party in the proceeding who
further certify in the Acknowledgement that they are not a
competitor to any party, or a consultant for, or employed by, such a
competitor with respect to the subject matter of the proceeding.
(D) In-house counsel. In-house counsel of a party.
(E) Other Employees of a Party. Employees, consultants or other
persons performing work for a party, other than in-house counsel and
in-house counsel's support staff, who sign the Acknowledgement shall
be extended access to confidential information only upon agreement
of the parties or by order of the Board upon a motion brought by the
party seeking to disclose confidential information to that person.
The party opposing disclosure to that person shall have the burden
of proving that such person should be restricted from access to
confidential information.
(F) The Office. Employees and representatives of the Office who
have a need for access to the confidential information shall have
such access without the requirement to sign an Acknowledgement. Such
employees and representatives shall include the Director, members of
the Board and their clerical staff, other support personnel, court
reporters, and other persons acting on behalf of the Office.
(G) Support Personnel. Administrative assistants, clerical
staff, court reporters and other support personnel of the foregoing
persons who are reasonably necessary to assist those persons in the
proceeding shall not be required to sign an Acknowledgement, but
shall be informed of the terms and requirements of the Protective
Order by the person they are supporting who receives confidential
information.
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3. Persons receiving confidential information shall use
reasonable efforts to maintain the confidentiality of the
information, including:
(A) Maintaining such information in a secure location to which
persons not authorized to receive the information shall not have
access;
(B) Otherwise using reasonable efforts to maintain the
confidentiality of the information, which efforts shall be no less
rigorous than those the recipient uses to maintain the
confidentiality of information not received from the disclosing
party;
(C) Ensuring that support personnel of the recipient who have access
to the confidential information understand and abides by the obligation
to maintain the confidentiality of information received that is
designated as confidential; and
(D) Limiting the copying of confidential information to a
reasonable number of copies needed for conduct of the proceeding and
maintaining a record of the locations of such copies.
4. Persons receiving confidential information shall use the
following procedures to maintain the confidentiality of the
information:
(A) Documents and Information Filed With the Board.
(i) A party may file documents or information with the Board
under seal, together with a non-confidential description of the
nature of the confidential information that is under seal and the
reasons why the information is confidential and should not be made
available to the public. The submission shall be treated as
confidential and remain under seal, unless, upon motion of a party
and after a hearing on the issue, or sua sponte, the Board
determines that the documents or information does not qualify for
confidential treatment.
(ii) Where confidentiality is alleged as to some but not all of
the information submitted to the Board, the submitting party shall
file confidential and non-confidential versions of its submission,
together with a Motion to Seal the confidential version setting
forth the reasons why the information redacted from the non-
confidential version is confidential and should not be made
available to the public. The nonconfidential version of the
submission shall clearly indicate the locations of information that
has been redacted. The confidential version of the submission shall
be filed under seal. The redacted information shall remain under
seal unless, upon motion of a party and after a hearing on the
issue, or sua sponte, the Board determines that some or all of the
redacted information does not qualify for confidential treatment.
(B) Documents and Information Exchanged Among the Parties.
Information designated as confidential that is disclosed to
another party during discovery or other proceedings before the Board
shall be clearly marked as "PROTECTIVE ORDER MATERIAL" and shall
be produced in a manner that maintains its confidentiality.
(k) Standard Acknowledgement of Protective Order. The following
form may be used to acknowledge the protective orders and gain
access to information covered by a protective order:
[CAPTION]
Standard Acknowledgment for Access to Protective Order Material
I __________________________________ , affirm that I have read the
Protective Order; that I will abide by its terms; that I will use
the confidential information only in connection with this proceeding
and for no other purpose; that I will only allow access to support
staff who are reasonably necessary to assist me in this proceeding;
that prior to any disclosure to such support staff I informed or
will inform them of the requirements of the Standing Protective
Order; that I am personally responsible for the requirements of the
terms of the Standing Protective Order and I agree to submit to the
jurisdiction of the Office and the United States District Court for
the Eastern District of Virginia for purposes of enforcing the terms
of the Protective Order and providing remedies for its breach.
[Signature]
January 31, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
| Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions |
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 42 and 90
[Docket No. PTO-P-2011-0082]
RIN 0651-AC70
Rules of Practice for Trials
Before the Patent Trial and Appeal Board and
Judicial Review of Patent Trial and Appeal Board Decisions
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office or
USPTO) proposes new rules of practice to implement the provisions of
the Leahy-Smith America Invents Act that provide for trials before the
Patent Trial and Appeal Board (Board). The proposed rules would provide
a consolidated set of rules relating to Board trial practice for inter
partes review, post-grant review, the transitional program for covered
business method patents, and derivation proceedings. The proposed rules
would also provide a consolidated set of rules to implement the
provisions of the Leahy-Smith America Invents Act related to seeking
judicial review of Board decisions.
DATES: The Office solicits comments from the public on this proposed
rulemaking. Written comments must be received on or before April 9,
2012 to ensure consideration.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: patent_trial_rules@uspto.gov. Comments may
also be submitted by postal mail addressed to: Mail Stop Patent Board,
Director of the United States Patent and Trademark Office, P.O. Box
1450, Alexandria, VA 22313-1450, marked to the attention of "Lead
Judge Michael Tierney, Patent Trial Proposed Rules."
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments are preferred to be submitted in
plain text, but also may be submitted in ADOBE® portable
document format or MICROSOFT WORD® format. Comments not
submitted electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE® portable
document format.
The comments will be available for public inspection at the Board
of Patent Appeals and Interferences, currently located in Madison East,
Ninth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also
will be available for viewing via the Office's Internet Web site
(http://www.uspto.gov). Because comments will be made available for
public inspection, information that the submitter does not desire to
make public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Michael Tierney, Lead Administrative
Patent Judge, Scott Boalick, Lead Administrative Patent Judge, Robert
Clarke, Administrative Patent Judge, and Joni Chang, Administrative
Patent Judge, Board of Patent Appeals and Interferences, by telephone
at (571) 272-9797.
SUPPLEMENTARY INFORMATION: On September 16, 2011, the Leahy-Smith
America Invents Act was enacted into law (Pub. L. 112-29, 125 Stat. 284
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(2011)). The purpose of the Leahy-Smith America Invents Act and these
proposed regulations is to establish a more efficient and streamlined
patent system that will improve patent quality and limit unnecessary
and counterproductive litigation costs. The preamble of this notice
sets forth in detail the procedures by which the Board will conduct
trial proceedings. The USPTO is engaged in a transparent process to
create a timely, cost-effective alternative to litigation. Moreover,
the rulemaking process is designed to ensure the integrity of the trial
procedures. See 35 U.S.C. 316(b), as amended, and 35 U.S.C. 326(b). The
proposed rules would provide a consolidated set of rules relating to
Board trial practice for inter partes review, post-grant review, the
transitional program for covered business method patents, and
derivation proceedings. See 35 U.S.C. 316(b), as amended, and 35 U.S.C.
326(b).
This notice proposes rules to implement the provisions of the
Leahy-Smith America Invents Act that provide for trials to be conducted
by the Board. In particular, the proposed rules would provide a
consolidated set of rules relating to Board trial practice for inter
partes review, post-grant review, derivation proceedings, and the
transitional program for covered business method patents by adding a
new part 42 including a new subpart A to title 37 of the Code of
Federal Regulations. The proposed rules would also provide a
consolidated set of rules to implement the provisions of the Leahy-
Smith America Invents Act related to seeking judicial review of Board
decisions by adding a new part 90 to title 37 of the Code of Federal
Regulations.
Additionally, the Office in separate rulemakings proposes to add a
new subpart B to 37 CFR part 42 (RIN 0651-AC71) to provide rules
specific to inter partes review, a new subpart C to 37 CFR part 42 (RIN
0651-AC72) to provide rules specific to post-grant review, a new
subpart D to 37 CFR part 42 (RIN 0651-AC73; RIN 0651-AC75) to provide
rules specific to the transitional program for covered business method
patents, and a new subpart E to 37 CFR part 42 (RIN 0651-AC74) to
provide rules specific to derivation proceedings. For the proposed
rules, the Office also developed a Trial Practice Guide (which will be
revised accordingly when the Office implements the final rules). The
notices of proposed rulemaking and the Trial Practice Guide are
published in this issue and the next issue (February 10, 2012) of the
Federal Register.
The instant notice refers to the proposed rules in subparts B
through E of part 42 set forth in the other notices. Moreover, rather
than repeating the statutory provisions set forth in the Leahy-Smith
America Invents Act for the implementation of inter partes review,
post-grant review, transitional program covered business method
patents, and derivation that are provided in the other notices of
proposed rulemaking, the instant notice only summarizes the provisions
related to the Board and judicial review of Board decisions that are
not provided in the other notices.
Patent Trial and Appeal Board
Section 7 of the Leahy-Smith America Invents Act amends 35 U.S.C. 6
and provides for the constitution and duties of the Patent Trial and
Appeal Board. 35 U.S.C. 6(a), as amended, provides that the Patent
Trial and Appeal Board members will include the Director, Deputy
Director, Commissioner for Patents, Commissioner for Trademarks, and
administrative patent judges. 35 U.S.C. 6(a), as amended, further
provides that "administrative patent judges shall be persons of
competent legal knowledge and scientific ability and are appointed by
the Secretary, in consultation with the Director." 35 U.S.C. 6(b), as
amended, specifies that the duties of the Patent Trial and Appeal Board
are to: (1) Review adverse decisions of examiners upon an application
for patent; (2) review appeals of reexaminations pursuant to section
134(b); (3) conduct derivation proceedings pursuant to 35 U.S.C. 135;
and (4) conduct inter partes reviews and post-grant reviews pursuant to
chapters 31 and 32 of title 35, United States Code. Further, § 7 of
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the Leahy-Smith America Invents Act amends 35 U.S.C. 6 by adding
paragraphs (c) and (d). New paragraph (c) of 35 U.S.C. 6 provides that
each appeal, derivation proceeding, post-grant review including covered
business method patent review, and inter partes review shall be heard
by at least 3 members of the Board, who shall be designated by the
Director.
Judicial Review of Patent Trial and Appeal Board Decisions
The Leahy-Smith America Invents Act amends title 35, United States
Code, to provide for certain changes to the provisions for judicial
review of Board decisions, such as amending 35 U.S.C. 134, 141, 145,
146, and 306 to change the Board's name to "Patent Trial and Appeal
Board" and to provide for judicial review of the final decisions of
the Board in inter partes reviews, post-grant reviews, covered business
method patent reviews, and derivation proceedings. The Leahy-Smith
America Invents Act also revises the provisions related to filing an
appeal or commencing a civil action in interferences under 35 U.S.C.
141 or 146, respectively.
In particular, § 3(j) of the Leahy-Smith America Invents Act
eliminates references to interferences. Section 3(j)(1) of the Leahy-
Smith America Invents Act amends each of 35 U.S.C. 145 and 146 by
striking the phrase "Board of Patent Appeals and Interferences" each
place it appears and inserting "Patent Trial and Appeal Board."
Section (3)(j)(2)(A) of the Leahy-Smith America Invents Act amends 35
U.S.C. 146 by: (i) Striking "an interference" and inserting "a
derivation proceeding;" and (ii) striking "the interference" and
inserting "the derivation proceeding." Section (3)(j)(3) of the
Leahy-Smith America Invents Act amends the section heading for 35
U.S.C. 134 to read as follows: "§ 134. Appeal to the Patent Trial
and Appeal Board." Section (3)(j)(4) of the Leahy-Smith America
Invents Act amends the section heading for 35 U.S.C. 146 to read as
follows: "§ 146. Civil action in case of derivation proceeding."
Section (3)(j)(6) of the Leahy-Smith America Invents Act amends the
item relating to 35 U.S.C. 146 in the table of sections for chapter 13
of title 35, United States Code, to read as follows: "146. Civil
action in case of derivation proceeding."
Section 6(f)(3)(C) of the Leahy-Smith America Invents Act provides
that the authorization to appeal or have remedy from derivation
proceedings in 35 U.S.C. 141(d) and 35 U.S.C. 146, as amended, and the
jurisdiction to entertain appeals from derivation proceedings under 28
U.S.C. 1295(a)(4)(A), as amended, shall be deemed to extend to any
final decision in an interference that is commenced before the
effective date (the date that is one year after the enactment date) and
that is not dismissed pursuant to § 6(f)(3)(A) of the Leahy-Smith
America Invents Act.
Section 6(h)(2)(A) of the Leahy-Smith America Invents Act amends 35
U.S.C. 306 by striking "145" and inserting "144."
Section 7(c)(1) of the Leahy-Smith America Invents Act amends 35
U.S.C. 141, entitled "Appeal to Court of Appeals for the Federal
Circuit." 35 U.S.C. 141(a), as amended, will provide that an applicant
who is dissatisfied with the final decision in an appeal to the Patent
Trial and Appeal Board under 35 U.S.C. 134(a) may appeal the Board's
decision to the United States Court of Appeals for the Federal Circuit.
35 U.S.C. 141(a), as amended, will further provide that, by filing an
appeal to the United States Court of Appeals for the Federal Circuit,
the applicant waives his or her right to proceed under 35 U.S.C. 145.
Section 7(c)(1) of the Leahy-Smith America Invents Act amends 35
U.S.C. 141(b) to make clear that a patent owner who is dissatisfied
with the final decision in an appeal of a reexamination to the Patent
Trial and Appeal Board under 35 U.S.C. 134(b) may appeal the Board's
decision only to the United States Court of Appeals for the Federal
Circuit.
Section 7(c)(1) of the Leahy-Smith America Invents Act amends 35
U.S.C. 141(c) to provide that a party to an inter partes review or a
post-grant review who is dissatisfied with the final written decision
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of the Patent Trial and Appeal Board under 35 U.S.C. 318(a) or 328(a)
may appeal the Board's decision only to the United States Court of
Appeals for the Federal Circuit.
Section 7(c)(1) of the Leahy-Smith America Invents Act amends 35
U.S.C. 141(d) to provide that a party to a derivation proceeding who is
dissatisfied with the final decision of the Patent Trial and Appeal
Board in the proceeding may appeal the decision to the United States
Court of Appeals for the Federal Circuit, but such appeal shall be
dismissed if any adverse party to such derivation proceeding, within 20
days after the appellant has filed notice of appeal in accordance with
35 U.S.C. 142, files notice with the Director that the party elects to
have all further proceedings conducted as provided in 35 U.S.C. 146, as
amended. 35 U.S.C. 141(d), as amended, will also provide that if the
appellant does not, within 30 days after the filing of such notice by
the adverse party, file a civil action under 35 U.S.C. 146, the Board's
decision shall govern the further proceedings in the case.
Section 7(c)(2) of the Leahy-Smith America Invents Act amends 28
U.S.C. 1295(a)(4)(A) to read as follows:
"(A) the Patent Trial and Appeal Board of the United States
Patent and Trademark Office with respect to a patent application,
derivation proceeding, reexamination, post-grant review, or inter
partes review under title 35, at the instance of a party who
exercised that party's right to participate in the applicable
proceeding before or appeal to the Board, except that an applicant
or a party to a derivation proceeding may also have remedy by civil
action pursuant to section 145 or 146 of title 35; an appeal under
this subparagraph of a decision of the Board with respect to an
application or derivation proceeding shall waive the right of such
applicant or party to proceed under section 145 or 146 of title
35;"
Section 7(c)(3) of the Leahy-Smith America Invents Act amends 35
U.S.C. 143 by striking the third sentence and inserting the following:
In an ex parte case, the Director shall submit to the court in
writing the grounds for the decision of the Patent and Trademark
Office, addressing all of the issues raised in the appeal. The
Director shall have the right to intervene in an appeal from a
decision entered by the Patent Trial and Appeal Board in a
derivation proceeding under section 135 or in an inter partes or
post-grant review under chapter 31 or 32
Section 7(c)(3) of the Leahy-Smith America Invents Act further
amends 35 U.S.C. 143 by striking the last sentence.
Section 7(e) of the Leahy-Smith America Invents Act provides that
the amendments made by § 7 of the Leahy-Smith America Invents Act
shall take effect upon the expiration of the 1-year period beginning on
the date of the enactment of the Leahy-Smith America Invents Act and
shall apply to proceedings commenced on or after that effective date,
with the following exceptions. First, that the extension of
jurisdiction to the United States Court of Appeals for the Federal
Circuit to entertain appeals of decisions of the Patent Trial and
Appeal Board in reexaminations under the amendment made by § 7(c)(2)
shall be deemed to take effect on the date of the enactment of
the Leahy-Smith America Invents Act and shall extend to any decision of
the Board of Patent Appeals and Interferences with respect to a
reexamination that is entered before, on, or after the date of the
enactment of this Act. Second, that the provisions of 35 U.S.C. 6, 134,
and 141, in effect on the day before the effective date of the
amendments made by § 7 of the Leahy-Smith America Invents Act shall
continue to apply to inter partes reexaminations requested under 35
U.S.C. 311 before such effective date. Third, that the Patent Trial and
Appeal Board may be deemed to be the Board of Patent Appeals and
Interferences for purposes of appeals of inter partes reexaminations
requested under 35 U.S.C. 311 before the effective date of the
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amendments made by § 7 of the Leahy-Smith America Invents Act. And
finally, that the Director's right under the fourth sentence of 35
U.S.C. 143, as amended by § 7(c)(3) of the Leahy-Smith America
Invents Act, to intervene in an appeal from a decision entered by the
Patent Trial and Appeal Board shall be deemed to extend to inter partes
reexaminations requested under 35 U.S.C. 311 before the effective date
of the amendments made by § 7 of the Leahy-Smith America Invents
Act.
Section 9(a) of the Leahy-Smith America Invents Act amends 35
U.S.C. 32, 145, 146, 154(b)(4)(A), and 293 by striking "United States
District Court for the District of Columbia" each place that term
appears and inserting "United States District Court for the Eastern
District of Virginia." Section 9(b) of the Leahy-Smith America Invents
Act provides that amendments made by § 9 of the Leahy-Smith America
Invents Act shall take effect on the date of the enactment of this Act
and shall apply to any civil action commenced on or after that date.
Discussion of Specific Rules
The proposed rules would provide a consolidated set of rules
relating to Board trial practice for inter partes review, post-grant
review, derivation proceedings, and the transitional program for
covered business method patents by adding a new part 42 including a new
subpart A to title 37 of the Code of Federal Regulations. Interference
proceedings would not be covered by a new part 42 and the rules in part
41 governing contested cases and interferences would continue to remain
in effect so as to not disrupt ongoing interference proceedings.
Additionally, the proposed rules would also provide a consolidated set
of rules to implement the provisions of the Leahy-Smith America Invents
Act relating to filing appeals from Board decisions by adding a new
part 90 to title 37 of Code of Federal Regulations.
Title 37 of the Code of Federal Regulations, Parts 42 and 90, are
proposed to be added as follows:
Part 42 - Trial Practice Before the Patent Trial and Appeal Board
General
Section 42.1: Proposed § 42.1 would set forth general policy
considerations for part 42.
Proposed § 42.1(a) would define the scope of the rules.
Proposed § 42.1(b) would provide a rule of construction for all
the rules in proposed part 42. The proposed rule would mandate that all
the Board's rules be construed to achieve the just, speedy, and
inexpensive resolution of Board proceedings. This proposed rule
reflects considerations identified in 35 U.S.C. 316(b) and 326(b),
which state that the Office is to take into account the integrity of
the patent system, the efficient administration of the Office, and the
ability of the Office to complete timely the proceedings in
promulgating regulations.
Proposed § 42.1(c) would require that decorum be exercised in
Board proceedings, including dealings with opposing parties. Board
officials would be similarly expected to treat parties with courtesy
and decorum.
Proposed § 42.1(d) would provide that the default evidentiary
standard for each issue in a Board proceeding is a preponderance of the
evidence. This proposed rule implements the statute, which directs that
unpatentability issues must be proven by a preponderance of the
evidence. 35 U.S.C. 316(e), as amended, and 35 U.S.C. 326(e). The
proposed rule is also consistent with 35 U.S.C. 135(b), which provides
that the Director shall establish regulations requiring sufficient
evidence to prove and rebut a claim of derivation. See Price v. Symsek,
988 F.2d 1187, 1193 (Fed. Cir. 1993).
Section 42.2: Proposed § 42.2 would set forth definitions for
Board proceedings under proposed part 42.
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The proposed definition of affidavit would provide that affidavit
means affidavits or declarations under § 1.68. The proposed
definition also provides that a transcript of an ex parte deposition or
a declaration under 28 U.S.C. 1746 may be used as an affidavit.
The proposed definition of Board would rename "the Board of Patent
Appeals and Interferences" to "the Patent Trial and Appeal Board."
The proposed definition would also provide that Board means a panel of
the Board or a member or employee acting with the authority of the
Board, consistent with 35 U.S.C. 6(b), as amended.
The proposed definition of business day would provide that business
day means a day other than a Saturday, Sunday, or Federal holiday
within the District of Columbia.
The proposed definition of confidential information would provide
that confidential information means trade secret or other confidential
research, development or commercial information. The proposed
definition would be consistent with Federal Rule of Civil Procedure
26(c)(1)(G), which provides for protective orders for trade secret or
other confidential research, development, or commercial information.
The proposed definition of final would provide that final means
final for purposes of judicial review. The proposed definition would
also provide that a decision is final only if it disposes of all
necessary issues with regard to the party seeking judicial review, and
does not indicate that further action is required.
The proposed definition of hearing would make it clear that a
hearing is a consideration of the issues involved in the trial.
The proposed definition of involved would provide that involved
means an application, patent, or claim that is the subject of the
proceeding.
The proposed definition of judgment would provide that judgment
means a final written decision by the Board. The proposed definition is
consistent with the requirement under 35 U.S.C. 318(a) and 328(a), as
amended, that the Board issue final written decisions for reviews that
are instituted and not dismissed. The proposed definition is also
consistent with 35 U.S.C. 135(d), as amended, which provides for final
decisions of the Board in derivation proceedings.
The proposed definition of motion would clarify that motions are
requests for remedies but that the term motion does not include
petitions seeking to institute a trial.
The proposed definition of Office would provide that Office means
the United States Patent and Trademark Office.
The proposed definition of panel would provide that a panel is at
least three members of the Board. The proposed definition is consistent
with 35 U.S.C. 6(c), as amended, that each derivation proceeding, inter
partes review, post-grant review, covered business method patent review
proceeding shall be heard by at least three members of the Board.
The proposed definition of party would include at least the
petitioner and the patent owner, as well as any applicant in a
derivation proceeding.
The proposed definition of petition would provide that a petition
is a request that a trial be instituted and is consistent with the
requirements of 35 U.S.C. 135(a) and 311, as amended, 35 U.S.C. 321.
The proposed definition of petitioner would provide that a
petitioner is a party requesting a trial be instituted. This proposed
definition is consistent with the requirements of 35 U.S.C. 135(a) and
311(a), as amended, and 35 U.S.C. 321(a), which provide that persons
seeking the institution of a trial may do so by filing a petition.
The proposed definition of preliminary proceeding would provide
that a preliminary proceeding begins with the filing of a petition for
instituting a trial and ends with a written decision as to whether a
trial will be instituted.
The proposed definition of proceeding would provide that a
proceeding means a trial or preliminary proceeding. This proposed
definition would encompass both the portion of the proceeding that
occurs prior to institution of a trial and the trial itself.
The proposed definition of rehearing would provide that rehearing
means reconsideration.
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The proposed definition of trial would provide that a trial is a
contested case instituted by the Board based upon a petition. This
proposed definition would encompass all contested cases before the
Board, except for interferences. The proposed definition would exclude
interferences so that interferences would continue, without disruption,
to use the rules provided in part 41. The existence of a contested case
would be a predicate for authorizing a subpoena under 35 U.S.C. 24. As
with part 41, inter partes reexaminations under 35 U.S.C. 134(c) are
not considered contested cases for the purposes of proposed part 42.
Similarly, written requests to make a settlement agreement available
would not be considered contested cases.
Section 42.3: Proposed § 42.3 would set forth the jurisdiction
of the Board in a Board proceeding.
Proposed § 42.3(a) would provide the Board with jurisdiction
over applications and patents involved in a Board proceeding. This is
consistent with 35 U.S.C. 6(b), as amended, which provides that the
Board is to conduct derivation proceedings, inter partes reviews, and
post-grant reviews. Additionally, the proposed rule is consistent with
the Board's role in conducting the transitional program for covered
business method patent reviews pursuant to § 18 of the Leahy-Smith
America Invents Act, as covered business method patent reviews are
subject to 35 U.S.C. 326(c), which provides that the Board conduct the
review.
Proposed § 42.3(b) would provide that a petition to institute a
trial must be filed with the Board in a timely manner.
Section 42.4: Proposed § 42.4 would provide for notice of
trial.
Proposed § 42.4(a) would specifically delegate the
determination to institute a trial to an administrative patent judge.
Proposed § 42.4(b) would provide that the Board will send a
notice of a trial to every party to the proceeding.
Proposed § 42.4(c) would provide that the Board may authorize
additional modes of notice. Note that the failure to maintain a current
correspondence address may result in adverse consequences. Ray v.
Lehman, 55 F.3d 606, 610 (Fed. Cir. 1995) (finding notice of
maintenance fee provided by the Office to an obsolete, but not updated,
address of record to have been adequate).
Section 42.5: Proposed § 42.5 would set forth the conduct of
the trial.
Proposed Sec. § 42.5(a) and (b) would permit administrative
patent judges wide latitude in administering the proceedings to balance
the ideal of precise rules against the need for flexibility to achieve
reasonably fast, inexpensive, and fair proceedings. The decision to
waive a procedural requirement, for example default times for taking
action, would be committed to the discretion of the administrative
patent judge. By permitting the judges to authorize relief under parts
1, 41, and 42, the proposed rule avoids delay and permits related
issues to be resolved in the same proceeding in a uniform and efficient
manner.
Proposed § 42.5(c) would provide that the Board may set times
by order. The proposed rule also provides that good cause must be shown
for extensions of time and to excuse late actions. Late action will also
be excused by the Board if it concludes that doing so is in the interests
of justice. This proposed requirement to show good cause to extend times
and to file belated papers is consistent with the requirements of 35 U.S.C.
316(a)(11), as amended, and 35 U.S.C. 326(a)(11), which provide that
the Board issue a final decision not less than 1 year after institution
of the review, extendable for good cause shown. The proposed rule is
also consistent with 35 U.S.C. 135(b), as amended, which provides that
the Director shall prescribe regulations setting forth standards for
the conduct of derivation proceedings.
Proposed § 42.5(d) would prohibit ex parte communications about
a proceeding with a Board member or Board employee actually conducting
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the proceeding. Under the proposed rule, the initiation of an ex parte
communication could result in sanctions against the initiating party.
The prohibition would include communicating with any member of a panel
acting in the proceeding or seeking supervisory review in a proceeding
without including the opposing party in the communication. In general,
under these proposed rules, it would be wisest to avoid substantive
discussions of a pending trial with a Board member or Board employee.
The prohibition on ex parte communications would not extend to: (1)
Ministerial communications with support staff (for instance, to arrange
a conference call); (2) hearings in which opposing counsel declines to
participate; (3) informing the Board in one proceeding of the existence
or status of a related Board proceeding; or (4) reference to a pending
case in support of a general proposition (for instance, citing a
published opinion from a pending case or referring to a pending case to
illustrate a systemic problem).
Section 42.6: Proposed § 42.6 would set forth the procedure for
filing documents, including exhibits, and service.
Proposed § 42.6(a) would provide guidance for the filing of
papers. Under proposed § 42.6(a), papers to be filed would be
required to meet standards similar to those required in patent
prosecution, § 1.52(a), and in the filings at the Federal Circuit
under Fed. R. App. P. 32. The proposed prohibition against
incorporation by reference would minimize the chance that an argument
would be overlooked and would eliminate abuses that arise from
incorporation and combination. In DeSilva v. DiLeonardi, 181 F.3d 865,
866-67 (7th Cir. 1999), the court rejected "adoption by reference" as
a self-help increase in the length of the brief and noted that
incorporation is a pointless imposition on the court's time as it
requires the judges to play archeologist with the record. The same
rationale applies to Board proceedings. Cf. Globespanvirata, Inc. v.
Tex. Instruments, Inc., 2005 WL 3077915, *1 (D. N.J. 2005) (Defendants
provided cursory statements in motion and sought to make their case
through incorporation of expert declaration and a claim chart.
Incorporation by reference of argument not in motion was held to be a
violation of local rules governing page limitations and was not
permitted by the court); S. Indus., Inc. v. JL Audio, Inc., 29 F. Supp.
2d 878, 881-82 (N.D. Ill. 1998) (Parties should not use line spacing,
font size, or margins to evade page limits).
Proposed § 42.6(b) would set electronic filing as the default
manner in which documents in a proceeding are filed with the Board. The
procedures for electronic filings in the proposed rule would be
consistent with the procedures for submission of electronic filings set
forth in § 2.126(b). Section 2.126(b) is a rule of the Trademark
Trial and Appeal Board (TTAB) which provides that submissions may be
made to the TTAB electronically according to parameters established by
the Board and published on the Web site of the Office.
The use of electronic filing, such as that used with the Board's
Interference Web Portal, facilitates public accessibility and is
consistent with the requirements of 35 U.S.C. 316(a)(1), as amended,
and 35 U.S.C. 326(a)(1), which state that the files of a proceeding are
to be made available to the public, except for those documents filed
with the intent that they be sealed. Where needed, a party may file by
means other than electronic filing but a motion explaining such a need
must accompany the non-electronic filing. In determining whether
alternative filing methods would be authorized, the Office would
consider the entity size and the ability of the party to file
electronically.
Proposed § 42.6(c) would require that exhibits be filed with
the first document in which the exhibit is cited so as to allow for
uniformity in citing to the record.
Proposed § 42.6(d) would prohibit the filing of duplicate
documents absent Board authorization.
Proposed § 42.6(e) would require service simultaneous with the
filing of the document, as well as require certificates of service.
Additional procedures to be followed when filing documents may be
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provided via a standing order of the Board. See In re Sullivan, 362
F.3d 1324 (Fed. Cir. 2004).
Section 42.7: Proposed § 42.7 would provide that the Board may
vacate or hold in abeyance unauthorized papers and would limit the
filing of duplicate papers. This proposed rule would provide a tool for
preventing abuses that can occur in filing documents and would ensure
that the parties and the Board are consistent in their citation to the
underlying record.
Section 42.8: Proposed § 42.8 would provide for certain
mandatory notices to be provided by the parties, including
identification of the real parties in interest, related matters, lead
and back-up counsel, and service information. The proposed rule would
require the identification of lead and back-up counsel and service
information. The mandatory notices concerning real parties in interest
and related matters are consistent with the requirements of 35 U.S.C.
315, as amended, and 35 U.S.C. 325. These statutes describe the
relationship between the trial and other related matters and authorize,
among other things, suspension of other proceedings before the Office
on the same patent and lack of standing for real parties in interest
that have previously filed civil actions against a patent for which a
trial is requested. Mandatory notices are also needed to judge any
subject matter estoppel triggered by a prior Board, district court, or
U.S. International Trade Commission proceeding.
Examples of related administrative matters that would be affected
by a decision in the proceeding include every application and patent
claiming, or which may claim, the benefit of the priority of the filing
date of the party's involved patent or application as well as any ex
parte and inter partes reexaminations for an involved patent.
The need for identification of the real party in interest helps
identify potential conflicts of interests for the Office. In the case
of the Board, a conflict would typically arise when an official has an
investment in a company with a direct interest in a Board proceeding.
Such conflicts can only be avoided if the parties promptly provide
information necessary to identify potential conflicts. The identity of
a real party-in-interest might also affect the credibility of evidence
presented in a proceeding. The Board would consider, on a case-by case
basis, relevant case law to resolve a real party in interest or privy
dispute that may arise during a proceeding. Further, in inter partes
and post-grant review proceedings before the Office, the petitioner
(including any real party-in-interest or privy of the petitioner) is
estopped from relitigating any ground that was or reasonably could have
been raised. See 35 U.S.C. 315(e)(1), as amended, and 35 U.S.C.
325(e)(1). What constitutes a real party-in-interest or privy is a
highly fact-dependent question. See generally 18A Wright & Miller Fed.
Prac. & Proc. Sec. § 4449, 4451; Taylor v. Sturgell, 553 U.S. 880
(2008). While many factors can lead to a determination that a
petitioner was a real party-in-interest or privy in a previous
proceeding, actual control or the opportunity to control the previous
proceeding is an important clue that such a relationship existed. See,
e.g., Taylor, 553 U.S. at 895; see generally 18A Wright & Miller §
4451. Factors for determining actual control or the opportunity to
control include existence of a controlling interest in the petitioner.
Section 42.9: Proposed § 42.9 would permit action by an
assignee to the exclusion of an inventor. Orders permitting an assignee
of a partial interest to act to the exclusion of an inventor or co-
assignee would rarely be granted, and such orders would typically issue
only when the partial assignee was in a proceeding against its co-
assignee. Ex parte Hinkson, 1904 Comm'r. Dec. 342.
Section 42.10: Proposed § 42.10(a) would provide that the Board
may require a party to designate a lead counsel. The proposed rule
would remind parties to designate back-up counsel who can conduct
business on behalf of the lead counsel as instances arise where lead
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counsel may be unavailable.
Proposed § 42.10(b) would provide that a power of attorney must
be filed for counsel not of record in the party's involved patent or
application.
Proposed § 42.10(c) would allow for pro hac vice representation
before the Board subject to such conditions as the Board may impose.
The Board may recognize counsel pro hac vice during a proceeding upon a
showing of good cause. Proceedings before the Office can be technically
complex. For example, it is expected that amendments to a patent will
be sought. Consequently, the grant of a motion to appear pro hac vice
is a discretionary action taking into account the specifics of the
proceedings. Similarly, the revocation of pro hac vice is a
discretionary action taking into account various factors, including
incompetence, unwillingness to abide by the Office's Rules of
Professional Conduct, and incivility.
The proposed rule, if adopted, would allow for this practice in the
new proceedings authorized by the Leahy-Smith America Invents Act.
Proposed § 42.10(d) would provide a limited delegation to the
Board under 35 U.S.C. 2(b)(2) and 32 to regulate the conduct of counsel
in Board proceedings. The proposed rule would delegate to the Board the
authority to conduct counsel disqualification proceedings while the
Board has jurisdiction over a proceeding. The rule would delegate to
the Chief Administrative Patent Judge the authority to make final a
decision to disqualify counsel in a proceeding before the Board for the
purposes of judicial review. This delegation would not derogate from
the Director the prerogative to make such decisions, nor would it
prevent the Chief Administrative Patent Judge from further delegating
authority to an administrative patent judge.
Proposed § 42.10(e) provides that counsel may not withdraw from
a proceeding before the Board unless the Board authorizes such
withdrawal.
Section 42.11: Proposed § 42.11 would remind parties, and
individuals associated with the parties, of their duty of candor and
good faith to the Office as honesty before the Office is essential to
the integrity of the proceeding.
Section 42.12: Proposed § 42.12 would provide rules for
sanctions in trial proceedings before the Board. 35 U.S.C. 316(a)(6),
as amended, and 35 U.S.C. 326(a)(6) require that the Director prescribe
sanctions for abuse of discovery, abuse of process, and any other
improper use of the proceeding in inter partes review, post-grant
review, and covered business method patent review proceedings. The
proposed rule is also consistent with 35 U.S.C. 135(b), as amended,
which provides that the Director shall prescribe regulations setting
standards for the conduct of derivation proceedings.
Proposed § 42.12(a) would identify types of misconduct for
which the Board may impose sanctions. The proposed rule would
explicitly provide that misconduct includes failure to comply with an
applicable rule, abuse of discovery, abuse of process, improper use of
the proceeding and misrepresentation of a fact. An example of a failure
to comply with an applicable rule includes failure to disclose a prior
relevant inconsistent statement.
Proposed § 42.12(b) would recite the list of sanctions that may
be imposed by the Board.
Section 42.13: Proposed § 42.13 would provide a uniform system
of citation to authority. The proposed rule would codify existing Board
practice and extends it to trial proceedings. Under the proposed rule,
a citation to a single source, in the priority order set out in the
rule, would be sufficient, thus minimizing the citation burden on the
public.
Section 42.14: Proposed § 42.14 would provide that the record
of a proceeding be made available to the public, except as otherwise
ordered. An exception to public availability would be those documents
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or things accompanied by a motion to seal the document or thing. The
proposed rule reflects the provisions of 35 U.S.C. 316(a)(1), as
amended, and 35 U.S.C. 326(a)(1), which require that inter partes
review and post-grant review files be made available to the public,
except that any petition or document filed with the intent that it be
sealed, if accompanied by a motion to seal, be treated as sealed
pending the outcome of the ruling on the motion to seal.
Fees
Sections 10(d) and (e) of the Leahy-Smith America Invents Act set
out a process that must be followed when the Office is using its
authority under section 10(a) to set or adjust patent fees. See Public
Law 112-29, 125 Stat. at 317-18. This process does not feasibly permit
the fees described herein to be in place by September 16, 2012 (the
effective date of many of the Board procedures required by the Leahy-
Smith America Invents Act and described herein). Therefore, the Office
is setting these fees pursuant to its authority under 35 U.S.C.
41(d)(2) in this rule making, which provides that fees for all
processing, services, or materials relating to patents not specified in
35 U.S.C. 41 are to be set at amounts to recover the estimated average
cost to the Office of such processing, services, or materials. See 35
U.S.C. 41(d)(2).
The Office is also in the process of developing a proposal to
adjust patent fees under section 10 of the Leahy-Smith America Invents
Act. The fees proposed in this notice will be revisited in furtherance
of the Director's fee setting efforts in this area.
Section 42.15: Proposed § 42.15 would set fees for the new
trial proceedings.
Proposed § 42.15(a) would set the fee for a petition to
institute an inter partes review of a patent based upon the number of
challenged claims, and reflects the requirements of 35 U.S.C. 311 and
312(a), as amended, that the Director set fees for the petition and
that the petition be accompanied by payment of the fee established.
Basing the fees on the number of claims challenged allows for ease of
calculation and reduces the chance of insufficient payment. Further,
the proposed fees are generally reflective of the complexity of
the case because the number of claims often impacts the complexity of
the petition and increases the demands placed on the patent owner as
well as the deciding officials. Cf. In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1309 (Fed. Cir. 2011)
(limiting number of asserted claims is appropriate to efficiently
manage a case).
To understand the scope of a dependent claim, the claims from which
the dependent claim depends must be construed along with the dependent
claim. Accordingly, for fee calculation purposes, each claim challenged
will be counted as well as any claim from which a claim depends, unless
the parent claim is also separately challenged. The following examples
are illustrative.
Example 1: Claims 1-30 are challenged where each of claims 2-30
are dependent claims and depend only upon claim 1. There are 30
claims challenged for purposes of fee calculation.
Example 2: Claims 20-40 are challenged where each of claims 20-
40 are dependent claims and depend only upon claim 1. As claims 20-
40 depend from claim 1, claim 1 counts toward the total number of
claims challenged. Thus, there are 21 claims challenged for fee
calculation purposes.
Example 3: Claims 1, 11-20, and 31-40 are challenged. Each of
claims 1 and 31-40 are independent claims. Each of claims 11-20 are
dependent claims and depend upon claim 9, which in turn depends upon
claim 8, which in turn depends upon claim 1. As claims 11-20 depend
upon parent claims 8 and 9, claims 8 and 9 would count as challenged
claims towards the total number of claims challenged. As claim 1 is
separately challenged, it would not count twice towards the total
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number of claims challenged. Thus, there are 23 claims challenged
for fee calculation purposes.
Example 4: Claims 1, 11-20, and 31-40 are challenged. Each of
claims 1 and 31-40 are independent claims. Claim 11 depends upon
claim 1 and claims 12-20 depend upon claim 11. As each of the
challenged claims is based on a separately challenged independent
claim, we need not include any further claims for fee calculations
purposes. Thus, there are 21 challenged claims.
Proposed § 42.15(b) would set the fee for a petition to
institute a post-grant review or a covered business method patent
review of a patent based upon the number of challenged claims, and
would reflect the requirements of 35 U.S.C. 321, as amended, and 35
U.S.C. 322(a) that the Director set fees for the petition and that the
petition be accompanied by payment of the fee established. The analysis
of the number of claims challenged for fee calculation purposes would
be the same as for proposed § 42.15(a).
Item (C) of the Rulemaking Considerations section of this notice,
infra, provides the Office's analysis of the cost to provide the
services requested for each of the proceedings.
Proposed § 42.15(c) would set the fee for a petition to
institute a derivation proceeding in the amount of $400. Derivation
proceedings concern allegations that an inventor named in an earlier
application, without authorization, derived the claimed invention from
an inventor named in the petition. The fee is set to recover the
treatment of the petition as a request to transfer jurisdiction from
the examining corps to the Board and not the costs of instituting and
performing the derivation trial which is necessary to complete the
examination process for the applicant seeking the derivation.
Proposed § 42.15(d) would set the fee for filing written
requests to make a settlement agreement available in the amount of
$400.
Petition and Motion Practice
Section 42.20: Proposed § 42.20(a) would provide that relief,
other than a petition to institute a trial, must be in the form of a
motion. The proposed rule is consistent with the requirements of 35
U.S.C. 316(a)(1) and 316(d), as amended, and 35 U.S.C. 326(a)(1) and
326(d) which provide that requests to seal a document and requests to
amend the patent be filed in the form of a motion.
Proposed § 42.20(b) would provide that motions will not be
entered absent Board authorization, and authorization may be provided
in an order of general applicability or during the proceeding.
Generally, the Board expects that authorization would follow the
current Board practice where a conference call would be required before
an opposed motion is filed as quite often the relief requested in such
motions can be granted (or denied) in a conference call. This practice
has significantly increased the speed and reduced the costs in
contested cases.
Proposed § 42.20(c) would place the burden of proof on the
moving party. A motion that fails to justify the relief on its face
could be dismissed or denied without regard to subsequent briefing.
Proposed § 42.20(d) would provide that the Board may order
briefing on any issue appropriate for a final written determination on
patentability. Specifically, 35 U.S.C. 318(a), as amended, and 328(a)
require that where a review is instituted and not dismissed the Board
shall issue a final written decision with respect to the patentability
of any patent claim challenged by the petitioner and any new claim
added. The proposed rule would provide for Board ordered briefing where
appropriate in order to efficiently and effectively render its final
decision on patentability.
Section 42.21: Proposed § 42.21(a) would provide that the Board
may require a party to file a notice stating the relief it requests and
the basis for that relief in Board proceedings. The proposed rule would
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make clear that a notice must contain sufficient detail to serve its
notice function. The proposed rule would provide an effective mechanism
for administering cases efficiently and placing opponents on notice.
Proposed § 42.21(b) would state the effect of a notice. The
proposed rule would make it clear that failure to state a sufficient
basis for relief would warrant a denial of the request.
Proposed § 42.21(c) would permit correction of a notice after
the time set for filing the notice, but would set a high threshold for
entry of the correction, i.e., if the entry was in the interests of
justice. The proposed rule is consistent with 35 U.S.C. 316(a)(11), as
amended, and 35 U.S.C. 326(a)(11), which require good cause be shown to
extend the time for entering a final decision. In determining whether
good cause is shown, the Board would be permitted to consider the
ability of the Board to complete timely the proceeding should the
request be granted. Hence, requests made at the outset of a proceeding
would be more likely to demonstrate good cause than requests made later
in the proceeding.
Section 42.22: Proposed § 42.22 concerns the general content of
motions.
Proposed § 42.22(a) would require that each petition or motion
be filed as a separate paper to reduce the chance that an argument
would be overlooked and reduce the complexity of any given paper.
Proposed § 42.22(a)(1)-(3) would provide for a statement of precise
relief requested, a statement of material facts, and statement of the
reasons for relief. Vague arguments and generic citations to the record
are fundamentally unfair to an opponent and do not provide sufficient
notice to an opponent and creates inefficiencies for the Board.
Proposed § 42.22(b) would require the movant to make showings
ordinarily required for the requested relief in other parts of the
Office. Many actions, particularly corrective actions like changes in
inventorship, filing reissue applications, and seeking a retroactive
foreign filing license, are governed by other rules of the Office. By
requiring the same showings the proposed rule would keep practice
uniform throughout the Office.
Proposed § 42.22(c) would provide that a petition or motion shall
contain a statement of facts with specific citations to the portions of
the record that support a particular fact. Providing specific citations
to the record gives notice to an opponent of the basis for the fact and
provides the Board the information necessary for effective and
efficient administration of the proceeding.
Proposed § 42.22(d) would allow the Board to order additional
showings or explanations as a condition for authorizing a motion.
Experience has shown that placing conditions on motions helps provide
guidance to the parties as to what issues and facts are of particular
importance and ensures that the parties are aware of controlling
precedent that should be addressed in a particular motion.
Section 42.23: Proposed § 42.23 would provide that oppositions
and replies must comply with the content requirements for a motion and
that a reply may only respond to arguments raised in the corresponding
opposition. Oppositions and replies may rely upon appropriate evidence
to support the positions asserted. Reply evidence, however, must be
responsive and not merely new evidence that could have been presented
earlier to support the movant's motion.
Section 42.24: Proposed § 42.24 would provide page limits for
petitions, motions, oppositions, and replies. 35 U.S.C. 316(b), as
amended, and 35 U.S.C. 326(b) provide considerations that are to be
taken into account when prescribing regulations, including the
integrity of the patent system, the efficient administration of the
Office, and the ability to timely complete the trials. The page limits
proposed in this rule are consistent with these considerations.
Federal courts routinely use page limits in managing motions
practice as "[e]ffective writing is concise writing." Spaziano v.
Singletary, 36 F.3d 1028, 1031 n.2 (11th Cir. 1994). Many district
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courts restrict the number of pages that may be filed in a motion
including, for example, the District of Delaware, the District of New
Jersey, the Eastern District of Texas, the Northern, Central, and
Southern Districts of California, and the Eastern District of Virginia.
Federal courts have found that page limits ease the burden on both
the parties and the courts, and patent cases are no exception. Eolas
Techs., Inc. v. Adobe Sys., Inc., No. 6:09-CV-446, at 1 (E.D. Tex.
Sept. 2, 2010) ("The Local Rules' page limits ease the burden of
motion practice on both the Court and the parties."); Blackboard, Inc.
v. Desire2Learn, Inc., 521 F. Supp. 2d 575, 576 (E.D. Tex. 2007) (The
parties "seem to share the misconception, popular in some circles,
that motion practice exists to require federal judges to shovel through
steaming mounds of pleonastic arguments in Herculean effort to uncover
a hidden gem of logic that will ineluctably compel a favorable ruling.
Nothing could be farther from the truth."); Broadwater v. Heidtman
Steel Prods., Inc., 182 F. Supp. 2d 705, 710 (S.D. Ill. 2002)
("Counsel are strongly advised, in the future, to not ask this Court
for leave to file any memoranda (supporting or opposing dispositive
motions) longer than 15 pages. The Court has handled complicated patent
cases and employment discrimination cases in which the parties were
able to limit their briefs supporting and opposing summary judgment to
10 or 15 pages." (Emphasis omitted)).
The Board's experience with page limits in interference motions
practice is consistent with that of the federal courts. The Board's use
of page limits has shown it to be beneficial without it being unduly
restrictive for the parties. Page limits have encouraged the parties to
focus on dispositive issues, easing the burden of motions practice on
the parties and on the Board.
The Board's experience with page limits in interference practice is
informed by its use of different approaches over the years. In the
early 1990s, page limits were not routinely used for motions, and the
practice suffered from lengthy and unacceptable delays. To reduce the
burden on the parties and on the Board and thereby reduce the time to
decision, the Board instituted page limits in the late 1990s for every
motion. Page limit practice was found to be effective in reducing the
burdens on the parties and improving decision times at the Board. In
2006, the Board revised the page limit practice and allowed unlimited
findings of fact and generally limited the number of pages containing
argument. Due to abuses of the system, the Board recently reverted back
to page limits for the entire motion (both argument and findings of
fact).
Proposed § 42.24(a) would provide specific page limits for
petitions and motions. The proposed rule would set a limit of 50 pages
for petitions requesting inter partes reviews and derivation
proceedings, 70 pages for petitions requesting post-grant review and
covered business method patent reviews, and 15 pages for motions.
The Board's current practice in interferences is to limit motions
for judgment on priority of invention to 50 pages, miscellaneous
motions to 15 pages and other motions to 25 pages. Hence, non-priority
motions for judgment of unpatentability are currently limited to 25
pages. The Board's current page limits are consistent with the 25 page
limits in the Northern, Central, and Southern Districts of California,
and the Middle District of Florida and exceed the limits in the
District of Delaware (20), the Northern District of Illinois (15), the
District of Massachusetts (20), the Eastern District of Michigan (20),
the Southern District of Florida (20), and the Southern District of
Illinois (20).
In a typical proceeding before the Board, a party may be authorized
to file: A single motion for unpatentability based on prior art; a
single motion for unpatentability based upon failure to comply with 35
U.S.C. 112, lack of written description and/or enablement; and
potentially another motion for lack of compliance with 35 U.S.C. 101,
although a 35 U.S.C. 101 motion may be required to be combined with the
35 U.S.C. 112 motion. Each of these motions is currently limited to 25
pages in length, unless good cause is shown that the page limits are
unduly restrictive for a particular motion.
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A petition requesting the institution of a trial proceeding would
be similar to motions currently filed with the Board. Specifically,
petitions to institute a trial seek a final written decision that the
challenged claims are unpatentable, where derivation is a form of
unpatentability. Accordingly, a petition to institute a trial based on
prior art would under current practice be limited to 25 pages, and by
consequence, a petition raising unpatentability based on prior art and
unpatentability under 35 U.S.C. 101 and/or 112 would be limited to 50
pages.
Under the proposed rules, an inter partes review petition would be
based upon any grounds identified in 35 U.S.C. 311(b), as amended,
i.e., only a ground that could be raised under 35 U.S.C. 102 or 103 and
only on the basis of patents or printed publications. Generally, under
current practice, a party is limited to filing single prior art
motions, limited to 25 pages in length. The proposed rule would provide
up to 50 pages in length for a motion requesting inter partes review.
Thus, as the proposed page limit doubles the default page limit
currently set for a motion before the Board, a 50 page limit is
considered sufficient in all but exceptional cases and is consistent
with the considerations provided in 35 U.S.C. 316(b), as amended.
Under the proposed rules, a post-grant review petition would be
based upon any grounds identified in 35 U.S.C. 321(b), e.g., failure to
comply with 35 U.S.C. 101, 102, 103, and 112 (except best mode). Under
current practice, a party would be limited to filing two or three motions,
each limited to 25 pages, for a maximum of 75 pages. Where there is more
than one motion for unpatentability based upon different statutory grounds,
the Board's experience is that the motions contain similar discussions of
technology and claim constructions. Such overlap is unnecessary where a
single petition for unpatentability is filed. Thus, the 70 proposed page
limit is considered sufficient in all but exceptional cases.
Covered business method patent review is similar in scope to that
of post-grant review as there is substantial overlap in the statutory
grounds permitted for review. Thus, the proposed page limit for
proposed covered business method patent reviews of 70 pages is the same
as that proposed for post-grant review.
Petitions to institute derivation proceedings raise a subset of the
issues that are currently raised in interferences in a motion for
judgment on priority of invention. Currently, motions for judgment on
priority of invention, including issues such as conception,
corroboration, and diligence, are generally limited to 50 pages in
length. Thus, the 50 proposed page limit is considered sufficient in
all but exceptional cases.
The proposed rule would provide that petitions to institute a trial
must comply with the stated page limits but may be accompanied by a
motion that seeks to waive the page limits. The petitioner must show in
the motion how a waiver of the page limits is in the interests of
justice. A copy of the desired non-page limited petition must accompany
the motion. Generally, the Board would decide the motion prior to
deciding whether to institute the trial.
Current Board practice provides a limit of 25 pages for other
motions and 15 pages for miscellaneous motions. The Board's experience
is that such page limits are sufficient for the filing parties and do
not unduly burden the opposing party and the Board. Petitions for
instituting a trial would generally replace the current practice of
filing motions for unpatentability. Most motions for relief are
expected to be similar to the current interference miscellaneous motion
practice. Accordingly, the proposed rule would provide a 15 page limit
for motions as this is considered sufficient for most motions but may
be adjusted where the limit is determined to be unduly restrictive for
the relief requested. A party may contact the Board and arrange for a
conference call to discuss the need for additional pages for a
particular motion. Except for a motion to waive the page limit
accompanying a petition seeking review, any motion to waive a page
limit must be granted in advance of filing a motion, opposition or
reply for which the waiver is necessary.
Proposed § 42.24(b) would provide page limits for oppositions.
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Current interference practice provides an equal number of pages for an
opposition as its corresponding motion. This is generally consistent
with motions practice in federal courts. The proposed rule would
continue the current practice.
Proposed § 42.24(c) would provide page limits for replies.
Current interference practice provides a 15-page limit for priority
motion replies, a 5 page limit for miscellaneous (procedural) motion
replies, and a 10 page limit for all other motions. The proposed rule
is consistent with current interference practice for procedural
motions. The proposed rule would provide a 15 page limit for reply to
petitions requesting a trial, which the Office believes is sufficient
based on current practice. Current interference practice has shown that
such page limits do not unduly restrict the parties and, in fact,
provide sufficient flexibility to parties to not only reply to the
motion but also help to focus on the issues.
Section 42.25: Proposed § 42.25 would provide default times for
filing oppositions and replies. The expectation, however, is that the
Board would tailor times appropriate to each case as opposed to relying
upon the default times set by rule.
Testimony and Production
The proposed rules would provide limitations for discovery and
testimony. Unlike in proceedings under the Federal Rules of Civil
Procedure, the burden of justifying discovery in Board proceedings
would lie with the party seeking discovery.
Proceedings before the Board differ from most civil litigation in
that the proponent of an argument before the Board generally has access
to relevant evidence that is comparable to its opponent's access.
Consequently, the expense and complications associated with much of
discovery can be avoided. For instance, since rejections are commonly
based on the contents of the specification or on publicly available
references, there is no reason to presume that the patent owner has
better access to evidence of unpatentability on these grounds than the
petitioner. Exceptions occur particularly when the ground of
unpatentability arises out of conduct, particularly conduct of a
purported inventor. In such cases, discovery may be necessary to prove
such conduct, in which case the proponent of the evidence may move for
additional discovery. The Board may impose conditions on such discovery
to prevent abuse.
Section 42.51: Proposed § 42.51(a) would provide for limited
discovery in the trial consistent with the goal of providing trials
that are timely, inexpensive, and fair. The proposed rule is consistent
with 35 U.S.C. 316(a)(5), as amended, and 326(a)(5), which provide for
discovery of relevant evidence but limit the scope of the discovery,
and 35 U.S.C. 135(b), as amended, which provides that the Director
shall prescribe regulations setting forth standards for the conduct of
derivation proceedings.
Proposed § 42.51(b)(1) and (b)(2) would provide for routine
discovery of exhibits cited in a paper or testimony and provide for
cross examination of affidavit testimony without the need to request
authorization from the Board. The proposed rule would eliminate many
routine discovery requests and disputes. The rule would not require a
party to create materials or to provide materials not cited.
Proposed § 42.51(b)(3) would ensure the timeliness of the
proceedings by requiring that parties, and individuals associated with
the parties, provide information that is inconsistent with a position
advanced by the patent owner or petitioner during the course of the
proceeding. The Office recognizes that this requirement may differ from
the proposed changes to § 1.56. But, Board experience has shown
that the information covered by proposed 42.51(b)(3) is typically
sought through additional discovery and that such information leads to
the production of relevant evidence. However, this practice of
authorizing additional discovery for such information risks significant
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delay to the proceeding and increased burdens on both the parties and
the Office. To avoid these issues, and to reduce costs and insure the
integrity and timeliness of the proceeding, the proposed rule makes the
production of such information routine. Similarly, while the Office
recognizes that some parties may be hesitant to use the new proceedings
because of this requirement, the benefit of the requirement outweighs
any impact on participation. Lastly this requirement does not override
legally-recognized privileges such as attorney-client or attorney work
product.
The proposed rule would require that the information be provided as
a petition, motion, opposition, reply, preliminary patent owner response,
or patent owner response to petition. The proposed rule would also require
that the party submitting the information specify the relevance of the
document, where the relevant information appears in the document and,
where applicable, how the information is pertinent to the claims. This
information aids the Board in rendering decisions in trial proceedings
within statutory timeframes. See 35 U.S.C. 316(a)(11) and 318(a), as
amended, and 35 U.S.C. 326(a)(11) and 328(a). The identification of
portions of the document relied upon and the pertinence of the
information aids the Board's efficient and effective administration of
the proceeding by making the information accessible to the Board as
opposed to having the Board play archeologist with the record. See
DeSilva v. DiLeonardi, 181 F.3d at 866-67.
Proposed § 42.51(c) would provide for additional discovery.
Additional discovery increases trial costs and increases the
expenditures of time by the parties and the Board. To promote effective
discovery, the proposed rule would require a showing that the
additional discovery sought in a proceeding other than a post-grant
review is in the interests of justice, which would place an affirmative
burden upon a party seeking the discovery to show how the proposed
discovery would be productive. A separate rule (§ 42.224) governs
additional discovery in post-grant proceedings. The Board's
interference experience, however, is that such showings are often
lacking and authorization for additional discovery is expected to be
rare.
The proposed interests-of-justice standard for additional discovery
is consistent with considerations identified in 35 U.S.C. 316(b), as
amended, including the efficient administration of the Board and the
Board's ability to complete timely trials. Further, the proposed
interests-of-justice standard is consistent with 35 U.S.C. 316(a)(5),
as amended, which states that discovery other than depositions of
witnesses submitting affidavits and declarations be what is otherwise
necessary in the interests of justice.
While the Board will employ an interests-of-justice standard in
granting additional discovery in inter partes reviews and derivation
proceedings, new subpart C will provide that a good cause standard will
be employed in post-grant reviews, and by consequence, in covered
business method patent reviews. Good cause and interests of justice are
closely related standards, but the interests-of-justice standard is
slightly higher than good cause. While a good cause standard requires a
party to show a specific factual reason to justify the needed
discovery, under the interests-of-justice standard, the Board would
look at all relevant factors. Specifically, to show good cause, a party
would be required to make a particular and specific demonstration of
fact. Under the interests-of-justice standard, the moving party would
also be required to show that it was fully diligent in seeking
discovery and that there is no undue prejudice to the non-moving party.
In contrast, the interests-of-justice standard covers considerable
ground, and in using such a standard, the Board expects to consider
whether the additional discovery is necessary in light of the totality
of the relevant circumstances.
Proposed § 42.52 would provide procedures for compelling
testimony. Under 35 U.S.C. 23, the Director may establish rules for
affidavit and deposition testimony. Under 35 U.S.C. 24, a party in a
contested case may apply for a subpoena to compel testimony in the
United States, but only for testimony to be used in the contested case.
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Proposed § 42.52(a) would require the party seeking a subpoena to
first obtain authorization from the Board; otherwise, the compelled
evidence would not be admitted in the proceeding. Proposed
§ 42.52(b) would impose additional requirements on a party seeking
testimony or production outside the United States because the use of
foreign testimony generally increases the cost and complexity of the
proceeding for both the parties and the Board. The Board would give
weight to foreign deposition testimony to the extent warranted in view
of all the circumstances, including the laws of the foreign country
governing the testimony.
Section 42.53: Proposed § 42.53 would provide for the taking of
testimony. To minimize costs, direct testimony would generally be taken
in the form of an affidavit. Cross-examination testimony and redirect
testimony would generally come in the form of a deposition transcript.
If the nature of the testimony makes direct observation of witness
demeanor necessary or desirable, the Board might authorize or even
require that the testimony be presented live or be video-recorded in
addition to filing of the required transcript. Cf. Applied Research
Sys. ARS Holdings N.V. v. Cell Genesys Inc., 68 USPQ2d 1863 (B.P.A.I.
2003) (non-precedential). The proponent of the witness would be
responsible for the cost of producing the witness for the deposition.
The parties would have latitude in choosing the time and place for the
deposition, provided the location is in the United States and the time
falls within a prescribed testimony period.
Proposed § 42.53(c)(2) would provide for the time period for
cross-examination and would set a norm for the conference proposed in
§ 42.53(c)(1). A party seeking to move the deposition outside this
period would need to show good cause.
Proposed § 42.53(d) would require that the party calling the
witness initiate a conference with the Board at least five business
days before a deposition with an interpreter is taken. Board experience
suggests that the complexity of foreign language depositions can be so
great that in many cases the resulting testimony is not useful to the
fact-finder. To avoid a waste of resources in the production of an
unhelpful record, the proposed rules would require that the Board
approve of the deposition format in advance. Occasionally the Board
will require live testimony where the Board considers the demeanor of a
witness critical to assessing credibility.
Proposed § 42.53(e) would provide for the manner of taking
testimony.
Proposed § 42.53(e)(1) would require that each witness before
giving deposition testimony be duly sworn according to law by the
officer before whom the deposition is to be taken. Proposed § 42.53(e)(1)
would also require that the officer be authorized to take testimony under
35 U.S.C. 23.
Proposed § 42.53(e)(2) would require that testimony be taken in
answer to interrogatories with any questions and answers recorded in
their regular order by the officer, or by some other disinterested
person in the presence of the officer, unless the presence of the
officer is waived on the record by agreement of all parties.
Proposed § 42.53(e)(3) would require that any exhibits used
during the deposition be numbered as required by § 42.63(b), and
must, if not previously served, be served at the deposition. Proposed
§ 42.53(e)(3) would also provide that exhibits objected to be
accepted pending a decision on the objection.
Proposed § 42.53(e)(4) would require that all objections be
made at the time of the deposition to the qualifications of the officer
taking the deposition, the manner of taking it, the evidence presented,
the conduct of any party, and that any other objection to the
deposition be noted on the record by the officer.
Proposed § 42.53(e)(5) would require the witness to read and sign
(in the form of an affidavit) a transcript of the deposition after the
testimony has been transcribed, unless the parties otherwise agree in
writing, the parties waive reading and signature by the witness on the
record at the deposition, or the witness refuses to read or sign the
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transcript of the deposition.
The certification of proposed § 42.53(e)(6)(vi) would provide a
standard for disqualifying an officer from administering a deposition.
The use of financial interest as a disqualification, however, would be
broader than the employment interest currently barred. Payment for
ordinary services rendered in the ordinary course of administering the
deposition and preparing the transcript would not be a disqualifying
financial interest. An interest acknowledged by the parties on the
record without objection would not be a disqualifying interest.
Proposed § 42.53(e)(7) would require the proponent of the
testimony to file the transcript of the testimony. If the original
proponent of the testimony declined to file the transcript (for
instance, because that party no longer intended to rely on the
testimony), but another party wished to rely on the testimony, the
party that wishes to file the testimony would become the proponent and
would be permitted to file the transcript as its own exhibit.
Section 42.54: Proposed § 42.54 would provide for protective
orders. 35 U.S.C. 316(a)(7), as amended, and 35 U.S.C. 326(a)(7)
require that the Director prescribe rules that provide for protective
orders governing the exchange and submission of confidential
information. Proposed § 42.54 would provide such protective orders
and follows the procedure set forth in the Federal Rule of Civil
Procedure 26(c)(1).
Section 42.55: Proposed § 42.55 would allow a petitioner filing
confidential information to file, concurrently with the filing of the
petition, a motion to seal as to the confidential information. The
petitioner must serve the patent owner the confidential information and
may do so under seal. The patent owner may access the confidential
information prior to institution of a trial by agreeing to the terms of
the proposed protective order contained in the motion to seal. The
institution of the trial would constitute a grant of the motion to seal
unless otherwise ordered by the Board. The proposed rule seeks to
streamline the process of seeking protective orders prior to the
institution of the review while balancing the need to protect
confidential information against an opponent's need to access
information used to challenge the opponent's claims.
Section 42.56: Confidential information that is subject to a
protective order ordinarily would become public 45 days after denial of
a petition to institute a trial or 45 days after final judgment in a
trial. Proposed § 42.56 would allow a party to file a motion to
expunge from the record confidential information prior to the
information becoming public. Proposed § 42.56 reflects the
considerations identified in 35 U.S.C. 316(b), as amended, and 35
U.S.C. 326(b), which state that the Office is to take into account the
integrity of the patent system in promulgating regulations. The
proposed rule balances the needs of the parties to submit confidential
information with the public interest in maintaining a complete and
understandable file history for public notice purposes. Specifically,
there is an expectation that information be made public where the
existence of the information is referred to in a decision to grant or
deny a request to institute a review or identified in a final written
decision. As such, the proposed rule would encourage parties to redact
sensitive information, where possible, rather than seeking to seal
entire documents.
Section 42.61: Proposed § 42.61 would provide for the
admissibility of evidence. Proposed § 42.61(a) would make the
failure to comply with the rules a basis for challenging admissibility
of evidence. Proposed § 42.61(b) would not require certification as
a condition for admissibility when the evidence is a record of the
Office that is accessible to all parties. This proposed rule would
avoid disputes on what otherwise would be technical noncompliance with
the rules. Proposed § 42.61(c) would provide that the specification
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and drawings are admissible only to prove what the specification and
drawings describe. This proposed rule would address a recurring problem
in which a party mistakenly relies on a specification to prove a fact
other than what the specification says. This proposed rule would make
clear that a specification of an application or patent involved in a
proceeding is admissible as evidence only to prove what the
specification or patent describes. If there is data in the
specification upon which a party intends to rely to prove the truth of
the data, an affidavit by an individual having first-hand knowledge of
how the data was generated (i.e., the individual who performed an
experiment reported as an example in the specification) must be filed.
Wojciak v. Nishiyama, 61 USPQ2d 1576, 1581 (B.P.A.I. 2001).
Section 42.62: Proposed § 42.62 would adopt a modified version
of the Federal Rules of Evidence. The proposed rule would adopt the
more formal evidentiary rules used in district courts in view of the
adversarial nature of the proceedings before the Board. The Federal
Rules of Evidence embrace a well-developed body of case law and are
familiar to the courts charged with reviewing Board decisions in
contested cases.
Section 42.63: Proposed § 42.63 would provide that all evidence
is to be submitted as an exhibit. For instance, the proposed rule would
provide that an exhibit filed with the petition must include the
petition's name and a unique exhibit number, for example: POE EXHIBIT
1001. For exhibits not filed with the petition, the proposed rule would
require the exhibit label to include the party's name followed by a
unique exhibit number, the names of the parties, and the trial number,
in the format of the following example:
OWENS EXHIBIT 2001, Poe v. Owens and Trial IPR2011OCT-00001.
Section 42.64: Proposed § 42.64 would provide procedures for
challenging the admissibility of evidence. In a district court trial,
an opponent may object to evidence, and the proponent may have an
opportunity to cure the basis of the objection. The proposed rule
offers a similar, albeit limited, process for objecting and curing in a
trial at the Board.
Proposed § 42.64(a) would provide that objections to the
admissibility of deposition evidence must be made during the
deposition. Proposed § 42.64(b) would provide guidance as to
objections and supplemental evidence for evidence other than deposition
testimony. The default time for serving an objection to evidence other
than testimony would be ten business days after service of the evidence
for evidence in the petition and five business days for subsequent
objections, and the party relying on evidence to which an objection was
timely served would have ten business days after service of the
objection to cure any defect in the evidence. The Board would not
ordinarily address an objection unless the objecting party filed a
motion to exclude under proposed § 42.64(c) because the objection
might have been cured or might prove unimportant in light of subsequent
developments. Proposed § 42.64(d) would permit a party to file a
motion in limine to obtain a ruling on admissibility.
Section 42.65: Proposed § 42.65 would provide rules for expert
testimony, tests, and data.
Proposed § 42.65(a) would remind parties that unsupported
expert testimony may be given little or no weight. Rohm & Haas Co. v.
Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). United States
patent law is not an appropriate topic for expert testimony before the
Board, and expert testimony pertaining thereto would not be admitted
under the proposed rule.
Proposed § 42.65(b) would provide guidance on how to present
tests and data. A party should not presume that the technical
competence of the trier-of-fact extends to a detailed knowledge of the
test at issue.
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Oral Argument, Decision and Settlement
Section 42.70: Proposed § 42.70 would provide guidance on oral
arguments.
Proposed § 42.70(a) would provide that a party may request oral
argument on an issue raised in a paper. The time for requesting oral
argument would be set by the Board.
Proposed § 42.70(b) would provide that a party serve
demonstrative exhibits at least five business days before the oral
argument. Experience has shown that parties are more effective in
communicating their respective positions at oral argument when
demonstrative exhibits have been exchanged prior to the hearing.
Cumbersome exhibits, however, tend to detract from the user's argument
and would be discouraged. The use of a compilation with each
demonstrative exhibit separately tabbed would be encouraged,
particularly when a court reporter is transcribing the oral argument
because the tabs provide a convenient way to record which exhibit is
being discussed. It is helpful to provide a copy of the compilation to
each member of the panel hearing the argument so that the judges may
better follow the line of argument presented.
Section 42.71: Proposed § 42.71 would provide for decisions on
petitions and motions.
Proposed § 42.71(a) would provide that a petition or motion may
be taken up in any order so that issues may be addressed in a fair and
efficient manner. This rule is consistent with 35 U.S.C. 316(b), as
amended, and 35 U.S.C. 326(b), which state that, among other things,
that the Director shall consider the efficient administration of the
Office in prescribing regulations. Further, such a practice was noted
with approval in Berman v. Housey, 291 F.3d 1345, 1352 (Fed. Cir.
2002).
Proposed § 42.71(b) would provide for interlocutory decisions.
The proposed rule would make clear that a decision short of judgment is
not final, but a decision by a panel would govern the trial. Experience
has shown that the practice of having panel decisions bind further
proceedings has eliminated much of the uncertainty and added cost that
result from deferring any final decision until the end of the
proceeding. In such instances, a party dissatisfied with an
interlocutory decision on motions should promptly seek rehearing rather
than waiting for a final judgment. A panel could, when the interests of
justice require it, reconsider its decision at any time in the
proceeding prior to final judgment. A belated request for rehearing
would rarely be granted, however, because its untimeliness would
detract from the efficiencies that result from making interlocutory
decisions binding.
Proposed § 42.71(c) would provide for rehearings and would set
times for requesting rehearing. Since 35 U.S.C. 6(b), as amended,
requires a panel decision for finality, a party should request
rehearing by a panel to preserve an issue for judicial review. The
panel would then apply the deferential abuse-of-discretion standard to
decisions on rehearing.
Section 42.72: Proposed § 42.72 would provide for termination
of a trial pursuant to 35 U.S.C. 317(a), as amended, and 35 U.S.C.
327(a), which provide for termination of a trial with respect to a
petitioner upon joint request of the petitioner and the patent owner,
unless the Office has decided the merits of the proceeding before the
request for termination is filed.
Section 42.73: Proposed § 42.73 would provide for judgment.
Proposed § 42.73(a) would provide that a judgment disposes of
all issues that were, or by motion could have been, properly raised and
decided.
Proposed § 42.73(b) would provide guidance as to the conditions
under which the Board would infer a request for adverse judgment.
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Proposed § 42.73(c) would provide for recommendations for
further action by an examiner or the Director.
Proposed § 42.73(d) would provide for estoppel.
Proposed § 42.73(d)(1) would apply to non-derivation proceeding
trials and is consistent with 35 U.S.C. 315(e)(1), as amended, and 35
U.S.C. 325(e)(1), which provide for estoppel in proceedings before the
Office where a final written decision was entered under 35 U.S.C.
318(a), as amended, or 35 U.S.C. 328(a).
Proposed § 42.73(d)(2) would provide estoppel provisions in
derivation proceedings. The proposed rule would also be consistent with
35 U.S.C. 135(d), as amended, which provides for the effect of a final
decision in a derivation proceeding. Proposed § 42.73(d)(2) differs
from proposed § 42.73(d)(1) to take into account the differences in
statutory language between 35 U.S.C. 135(d) and 315(e)(1), as amended,
and 35 U.S.C. 325(e)(2).
Proposed § 42.73(d)(3) would apply estoppel against a party
whose claim was cancelled or who requested an amendment to the
specification or drawings that was denied.
Section 42.74: Proposed § 42.74 would provide guidance on
settling proceedings before the Board. 35 U.S.C. 135(e) and 317, as
amended, and 35 U.S.C. 327 will govern settlement of Board trial
proceedings but do not expressly govern pre-institution settlement.
Proposed § 42.74(a) would reflect that the Board is not a party
to a settlement agreement and may take any necessary action, including
determination of patentability notwithstanding a settlement. This
proposed rule is consistent with 35 U.S.C. 135(e), as amended, where
the Board is not required to follow the settlement agreement if it is
inconsistent with the evidence. The proposed rule is also consistent
with 35 U.S.C. 317, as amended, and 35 U.S.C. 327, which provide that
the Board may proceed to a final written decision even if no petitioner
remains in the proceeding.
Proposed § 42.74(b) would provide that settlement agreements
must be in writing and filed with the Board prior to termination of the
proceeding. This proposed rule is consistent with 35 U.S.C. 317(b), as
amended, and 327(b), which require the agreement to be in writing and
filed before termination of the proceeding. The proposed rule is also
consistent with 35 U.S.C. 135(e), as amended, which provides that
parties may seek to terminate the derivation proceeding by filing a
written statement.
Proposed § 42.74(c) would provide that a party to a settlement
may request that the settlement be kept separate from an involved
patent or application. The proposed rule is consistent with the
requirements of 35 U.S.C. 135(e) and 317(b), as amended, and 35 U.S.C.
327(b).
Certificate
Section 42.80: Proposed § 42.80 provides for issuance and publication
of a certificate after the Board issues a final decision and the time for
appeal has expired or an appeal has terminated. The proposed rule would
be consistent with 35 U.S.C. 318, as amended, and 35 U.S.C. 328.
Part 90 - Judicial Review of Patent Trial and Appeal Board Decisions
The Leahy-Smith America Invents Act amends chapter 13 of title 35,
United States Code, to provide for certain changes to the provisions
for judicial review of Board decisions. A new part 90 of title 37, Code
of Federal Regulations is proposed to be added to permit consolidation
of rules relating to court review of Board decisions and to simplify
reference to such practices. The proposed rules in part 90 would also
implement the provisions of the Leahy-Smith America Invents Act
associated with judicial review of agency actions addressed by the
Leahy-Smith America Invents Act.
Current §§ 1.301 through 1.304, which relate to rules of
practice in patent cases, would be removed from part 1 and relocated to
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part 90. Paraphrasing of the statute in those rules would be eliminated
in the proposed new rules in favor of directing the reader to the
relevant statutory provisions. This change would avoid the need for the
Office to amend the rules when statutory amendments are made. It would
also avoid undue public reliance on the Office's paraphrase of
statutory text. The proposed rules in part 90 would better state the
existing practice and are not intended to change the existing practice
except as explicitly provided.
Section 90.1: Proposed § 90.1 would clarify the scope of the
proposed rules in part 90. The proposed rules in part 90 would be
limited to rules governing the procedure by which a party dissatisfied
with the final decision in an appeal to the Patent Trial and Appeal
Board under 35 U.S.C. 134 may seek judicial review of the Patent Trial
and Appeal Board decision pursuant to Chapter 13 of title 35, United
States Code. This would include judicial review of the Patent Trial and
Appeal Board decisions arising out of ex parte prosecution. The
proposed rules in part 90 would not apply to other avenues for judicial
review of Office decisions that may be available, such as appeals from
Trademark Trial and Appeal Board decisions pursuant to § 2.145,
civil actions brought pursuant to the Administrative Procedure Act, or
mandamus actions. The title of part 90 would indicate that this part
would apply only to judicial review of Patent Trial and Appeal Board
decisions.
Proposed § 90.1 would clarify that the rules in effect on July
1, 2012, would continue to govern appeals from inter partes
reexamination proceedings. Section 7(e) of the Leahy-Smith America
Invents Act maintains the statutory provisions governing inter partes
reexaminations requested under 35 U.S.C. 311, and the review provision
of 35 U.S.C. 141 for Board decisions arising out of such
reexaminations, as they existed at the time the Leahy-Smith America
Invents Act was enacted. Accordingly, the Office will continue to apply
the regulations as they existed when the Leahy-Smith America Invents
Act was enacted (or as subsequently modified prior to July 1, 2012) for
those proceedings. Further, § 3(n)(2) of the Leahy-Smith America
Invents Act provides that the provisions of 35 U.S.C. 135 "as in
effect on the day before the effective date set forth in paragraph (1)
of this subsection" shall apply to certain applications. Thus,
interference proceedings will still be available for a limited period
for certain applications under the Leahy-Smith America Invents Act.
Regarding judicial review of Board decisions arising out of such
interferences, § 7(c) and (e) of the Leahy-Smith America Invents
Act makes review by the Federal Circuit available under 35 U.S.C. 141
only for proceedings commenced before September 16, 2012. Similarly,
§ 3 of the Leahy-Smith America Invents Act makes review of
interference decisions by a district court under 35 U.S.C. 146
available only if the provisions of § 3(n)(1) of the Leahy-Smith
America Invents Act are not satisfied. That is because if the involved
application contains a claim satisfying the terms of § 3(n)(1) of
the Leahy-Smith America Invents Act (e.g., a continuation-in-part
application), then § 3(j) of the Leahy-Smith America Invents Act -
changing 35 U.S.C. 146 from review of "an interference" to review of
"a derivation proceeding" - applies, and district court review of a
decision arising out an interference proceeding under 35 U.S.C. 135
will not be available. To the extent that an interference proceeding
under 35 U.S.C. 135 is available and judicial review of that decision
is available, the Office will continue to apply the regulations as they
existed when the Leahy-Smith America Invents Act was enacted (or as
subsequently modified prior to July 1, 2012) to those proceedings.
Lastly, note that certain interferences may be deemed to be eligible
for judicial review as though they were derivation proceedings. See
§ 6(f)(3) of the Leahy-Smith America Invents Act.
Section 90.2: Proposed § 90.2 would address notice and service
requirements associated with notices of appeal and civil actions
seeking judicial review of Board decisions. The proposed rule would
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combine the notice and service requirements of current §§ 1.302, and
1.303 for proceedings addressed by those rules. Paraphrasing of the
statute in those rules would be eliminated in proposed § 90.2 in favor
of directing the reader to the relevant statutory provisions to streamline
the rules and prevent confusion. The proposed rule would also include
references to pertinent statutory provisions or court rules that apply in
such court proceedings. Proposed § 90.2 would further add provisions
associated with judicial review of Board decisions in inter partes reviews,
post-grant reviews, covered business method patent reviews, and derivation
proceedings.
Proposed § 90.2 would require parties filing an appeal under 35
U.S.C. 141, initiating a civil action pursuant to 35 U.S.C. 146, or
electing under 35 U.S.C. 141(d) to proceed under 35 U.S.C. 146, to file
a copy of the notice of appeal, complaint, or notice of election,
respectively, with the Board in the appropriate manner provided in
§ 41.10(a), 41.10(b), or 42.6(b). The proposed rule would also
require that a complaint under 35 U.S.C. 146 be filed with the Board no
later than five business days after filing the complaint in district
court. These requirements would ensure that the Board is aware of such
proceedings and would prevent further action within the Office
consistent with the Board decision at issue in the appeal or civil
action. Proposed § 90.2 would further require that the complaint be
filed with the Office pursuant to § 104.2 within the same five
business day time period. That requirement similarly assures that the
Office has adequate notice of the pending judicial review proceeding.
Section 90.3: Proposed § 90.3 would address the time for filing
a notice of appeal under 35 U.S.C. 142 and a notice of election under
35 U.S.C. 141(d), as amended, and the commencement of a civil action.
Proposed § 90.3(a) would address the time for filing a notice
of appeal or a civil action seeking judicial review of a Board
decision. The proposed rule would extend the period for filing a notice
of appeal or a civil action under § 1.304 to sixty-three (63) days.
This proposed change would avoid confusion regarding that period, which
was two months except when the two-month period included February 28,
in which case the period was two months and one day. The proposed
sixty-three (63) day period would result in the deadline for filing a
notice of appeal or a civil action falling on the same day of the week
as the Board decision. Thus, the proposed rule would minimize
calculations regarding extensions of time pursuant to
35 U.S.C. 21(b), which applies when the time period ends on a Saturday,
Sunday, or Federal holiday in the District of Columbia, by eliminating
the possibility that a Saturday or Sunday would be the final day of the
period.
Proposed § 90.3(a) would also remove language regarding the
time for cross-appeals from § 1.304. Instead, the proposed rule
would refer to the pertinent rules in the Federal Rules of Appellate
Procedure and the Rules for the United States Court of Appeals for the
Federal Circuit to avoid confusion or inconsistency. The proposed rule
would also add a reference to 35 U.S.C. 141(d) for both the relevant
time for filing a notice of election under that statute and the
relevant time for commencing a civil action pursuant to a notice of
election under that statute.
Proposed § 90.3(b) and (c) would incorporate provisions from
current § 1.304 addressing computation of time and extensions of time.
Rulemaking Considerations
A. Administrative Procedure Act (APA): This notice proposes rules
of practice concerning the procedure for requesting an inter partes
review, post-grant review, covered business method patent review, or a
derivation, and the trial process after initiation of such a review.
The notice also proposes changes to the rule of practice to consolidate
the procedure for appeal of a decision by the Board and to require that
a copy of the notice of appeal, notice of election, and complaint be
provided to the Board. The changes being proposed in this notice do not
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change the substantive criteria of patentability. These proposed
changes involve rules of agency practice and procedure and/or
interpretive rules. See Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690
(D.C. Cir. 2001) (rules governing an application process are procedural
under the Administrative Procedure Act); Inova Alexandria Hosp. v.
Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals
were procedural where they did not change the substantive standard for
reviewing claims); Nat'l Org. of Veterans' Advocates v. Sec'y of
Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that
clarifies interpretation of a statute is interpretive).
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law), and
thirty-day advance publication is not required pursuant to 5 U.S.C.
553(d) (or any other law). See Cooper Techs. Co. v. Dudas, 536 F.3d
1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35
U.S.C. 2(b)(2)(B), does not require notice and comment rule making for
"interpretative rules, general statements of policy, or rules of
agency organization, procedure, or practice") (quoting 5 U.S.C.
553(b)(A)). The Office, however, is publishing these changes and the
Initial Regulatory Flexibility Act analysis, below, for comment as it
seeks the benefit of the public's views on the Office's proposed
implementation of these provisions of the Leahy-Smith America Invents
Act.
B. Regulatory Flexibility Act: The Office estimates that 460
petitions for inter partes review, 50 petitions for post-grant review
and covered business method patent review combined, and 50 petitions
for derivation proceedings will be filed in fiscal year 2013. This will
be the first fiscal year in which review proceedings will be available
for an entire fiscal year, and derivation proceedings will be available
for more than 6 months. The estimate for inter partes review petitions
is partially based on the number of inter partes reexamination requests
under 37 CFR 1.915 that have been filed in fiscal years 2010 and 2011.
The Office received 281 requests for inter partes reexamination in
fiscal year 2010. See Table 13B of the United States Patent and
Trademark Office Performance and Accountability Report for Fiscal Year
2010, available at
http://www.uspto.gov/about/stratplan/ar/2010/USPTOFY2010PAR.pdf.
The Office received 374 requests for inter partes reexamination in
fiscal year 2011. See Table 14B of the United States Patent and
Trademark Office Performance and Accountability Report for Fiscal Year
2011, available at
http://www.uspto.gov/about/stratplan/ar/2011/USPTOFY2011PAR.pdf.
Additionally, the Office takes into consideration the recent growth
rate in the number of requests for inter partes reexamination, the
projected growth due to an expansion in the number of eligible patents
under the inter partes review provisions of the Leahy-Smith America
Invents Act (see § 6(c)), and the more restrictive filing time
period in 35 U.S.C. 315(b) as amended by the Leahy-Smith America
Invents Act.
In fiscal year 2013, it is expected that no post-grant review
petitions will be received, other than those filed under the
transitional program for covered business method patents. Thus, the
estimated number of post-grant review petitions including covered
business method patent review petitions is based on the number of inter
partes reexamination requests filed in fiscal year 2011 for patents
having an original classification in class 705 of the United States
Patent Classification System. Class 705 is the classification for
patents directed to data processing in the following areas: financial,
business practice, management, or cost/price determination. See
http://www.uspto.gov/web/patents/classification/uspc705/sched705.pdf.
The following is the class definition and description for Class
705:
This is the generic class for apparatus and corresponding
methods for performing data processing operations, in which there is
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a significant change in the data or for performing calculation
operations wherein the apparatus or method is uniquely designed for
or utilized in the practice, administration, or management of an
enterprise, or in the processing of financial data.
This class also provides for apparatus and corresponding methods
for performing data processing or calculating operations in which a
charge for goods or services is determined.
This class additionally provides for subject matter described in
the two paragraphs above in combination with cryptographic apparatus
or method.
Subclasses 705/300-348 were established prior to complete
reclassification of all project documents. Documents that have not
yet been reclassified have been placed in 705/1.1. Until
reclassification is finished a complete search of 705/300-348 should
include a search of 705/1.1. Once the project documents in 705/1.1
have been reclassified they will be moved to the appropriate
subclasses and this note will be removed.
Scope of the Class
1. The arrangements in this class are generally used for
problems relating to administration of an organization, commodities
or financial transactions.
2. Mere designation of an arrangement as a "business machine"
or a document as a "business form" or "business chart" without
any particular business function will not cause classification in
this class or its subclasses.
3. For classification herein, there must be significant claim
recitation of the data processing system or calculating computer and
only nominal claim recitation of any external art environment.
Significantly claimed apparatus external to this class, claimed in
combination with apparatus under the class definition, which perform
data processing or calculation operations are classified in the
class appropriate to the external device unless specifically
excluded therefrom.
4. Nominally claimed apparatus external to this class in
combination with apparatus under the class definition is classified
in this class unless provided for in the appropriate external class.
5. In view of the nature of the subject matter included herein,
consideration of the classification schedule for the diverse art or
environment is necessary for proper search.
See Classification Definitions (Feb. 2011) available at
http://www.uspto.gov/web/patents/classification/uspc705/defs705.htm.
Accordingly, patents subject to covered business method patent
review are anticipated to be typically classifiable in Class 705. It is
anticipated that the number of patents in Class 705 that do not
qualified as covered business method patents would approximate the
number of patents classified in other classes that do qualify.
The Office received 20 requests for inter partes reexamination of
patents classified in Class 705 in fiscal year 2011. The Office in
estimating the number of petitions for covered business method patent
review to be higher than 20 requests due to an expansion of grounds for
which review may be requested including subject matter eligibility
grounds, the greater coordination with litigation, and the provision
that patents will be eligible for the proceeding regardless of filing
date of the application which resulted in the patent. It is not
anticipated that any post-grant review petitions will be received in
fiscal year 2013 as only patents issuing based on certain applications
filed on or after March 16, 2013, or certain applications involved in
an interference proceeding commenced before September 12, 2012, are
eligible for post-grant review. See Pub. L. 112-29, § 6(f), 125
Stat. 284, 311 (2011).
The Office expects the number of newly declared interferences to
decrease as some parties file inter partes review petitions rather than
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file reissue applications of their own earlier filed patents. Parties
filing such reissue applications often seek a review of another party's
issued patent in an interference proceeding.
The Office has reviewed the entity status of patents for which
inter partes reexamination was requested from October 1, 2000, to
September 23, 2011. This data only includes filings granted a filing
date in the particular year rather than filings in which a request was
received in the year. The first inter partes reexamination was filed on
July 27, 2001. A summary of that review is provided in Table 1 below.
As shown by Table 1, patents known to be owned by a small entity
represented 32.79% of patents for which inter partes reexamination was
requested. Based on an assumption that the same percentage of patents
owned by small entities will be subject to inter partes review, post-
grant review, covered business method patent review, and derivation
proceedings, it is estimated that 151 petitions for inter partes
review, 16 petitions for post-grant and covered business method patent
review combined, and 16 petitions for derivation proceedings would be
filed to seek review of patents owned by a small entity in fiscal year
2013, the first full fiscal year that these proceedings will be
available.
Table 1 - Inter partes Reexamination Requests
Filed With Parent Entity Type *
[* Small entity status determined by reviewing preexamination
small entity indicator for the parent patent]
Number filed
Inter partes where parent Percent small
reexamination patent is entity type of
Fiscal year requests filed small entity type total
2011 329 123 37.39
2010 255 94 36.86
2009 240 62 25.83
2008 155 52 33.55
2007 127 35 27.56
2006 61 17 27.87
2005 59 18 30.51
2004 26 5 19.23
2003 21 12 57.14
2002 4 1 25.00
2001 1 0 0.00
1,278 419 32.79
Based on the number of patents issued during fiscal years 1995
through 1999 that paid the small entity third stage maintenance fee,
the number of patents issued during fiscal years 2000 through 2003 that
paid the small entity second stage maintenance fee, the number of
patents issued during fiscal years 2004 through 2007 that paid the
first stage maintenance fee, and the number of patents issued during
fiscal years 2008 through 2011 that paid a small entity issue fee,
there are no less than 375,000 patents owned by small entities in force
as of October 1, 2011.
Furthermore, the Office recognizes that there would be an offset to
this number for patents that expire earlier than 20 years from their
filing date due to a benefit claim to an earlier application or due to
a filing of a terminal disclaimer. The Office likewise recognizes that
there would be an offset in the opposite manner due to the accrual of
patent term extension and adjustment. The Office, however, does not
maintain data on the date of expiration by operation of a terminal
disclaimer. Therefore, the Office has not adjusted the estimate of
375,000 patents owned by small entities in force as of October 1, 2011.
While the Office maintains information regarding patent term extension
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and adjustment accrued by each patent, the Office does not collect data
on the expiration date of patents that are subject to a terminal
disclaimer. As such, the Office has not adjusted the estimated of
375,000 patents owned by small entities in force as of October 1, 2011,
for accrual of patent term extension and adjustment, because in view of
the incomplete terminal disclaimer data issue, would be incomplete and
any estimate adjustment would be administratively burdensome. Thus, it
is estimated that the number of small entity patents in force in fiscal
year 2013 will be at least 375,000.
Based on the estimated number of patents in force, the number of
small entity owned patents impacted by inter partes review in fiscal
year 2013 (151 patents) would be less than 0.05% (151/375,000) of all
patents in force that are owned by small entities. Moreover, post-grant
and covered business method patent review and derivation would have a
smaller impact. The USPTO nonetheless has undertaken an Initial
Regulatory Flexibility Act Analysis of the proposed rule.
1. Description of the Reasons That Action by the Office Is Being
Considered: On September 16, 2011, the Leahy-Smith America Invents Act
wasenacted into law (Pub. L. 112-29, 125 Stat. 284 (2011)). Section 6
of the Leahy-Smith America Invents Act amends chapter 31 of title 35,
United States Code, to create a new inter partes review proceeding
which will take effect on September 16, 2012, one year after the date
of enactment, and eliminate inter partes reexamination (except for
requests filed before the effective date of September 16, 2012).
Section 6 of the Leahy-Smith America Invents Act further amends title
35, United States Code, by adding chapter 32 to create a new post-grant
review proceeding. Section 18 of the Leahy-Smith America Invents Act
provides for a transitional program for covered business method patents
which will employ the standards and procedures of the post-grant review
proceeding with a few exceptions. Additionally, § 3(i) of the
Leahy-Smith America Invents Act amends 35 U.S.C. 135 to provide for
derivation proceedings and eliminate the interference practice as to
applications and patents that have an effective filing date on or after
March 16, 2013 (with a few exceptions). For the implementation,
§§ 6(c) and 6(f) of the Leahy-Smith America Invents Act
requires that the Director issue regulations to carry out chapter 31,
as amended, and chapter 32 of title 35, United States Code, within one
year after the date of enactment. Public Law 112-29, §§ 6(c)
and 6(f), 125 Stat. 284, 304 and 311 (2011). Moreover, 35 U.S.C.
135(b), as amended, requires that the Director prescribe regulations to
set forth the standards for conducting derivation proceedings,
including requiring parties to provide sufficient evidence to prove and
rebut a claim of derivation.
2. Succinct Statement of the Objectives of, and Legal Basis for,
the Proposed Rules: The proposed rules seek to implement inter partes
review, post-grant review, the transitional program for covered
business method patents, and derivation proceedings as authorized by
the Leahy-Smith America Invents Act. The Leahy-Smith America Invents
Act requires that the Director prescribe rules for the inter partes,
post-grant, and covered business method patent reviews that result in a
final determination not later than one year after the date on which the
Director notices the institution of a proceeding. The one-year period
may be extended for not more than 6 months if good cause is shown. See
35 U.S.C. 316(a)(11), as amended, and 35 U.S.C. 326(a)(11). The Leahy-
Smith America Invents Act also requires that the Director, in
prescribing rules for the inter partes, post-grant, and covered
business method patent reviews, consider the effect of the rules on the
economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to complete
timely the instituted proceedings. See 35 U.S.C. 316(b), as amended,
and 35 U.S.C. 326(b). Consistent with the time periods provided in 35
U.S.C. 316(a)(11), as amended, and 35 U.S.C. 326(a)(11), the proposed
rules are designed to, except where good cause is shown to exist,
result in a final determination by the Patent Trial and Appeal Board
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within one year of the notice of initiation of the review. This one-
year review will enhance the effect on the economy, and improve the
integrity of the patent system and the efficient administration of the
Office.
3. Description and Estimate of the Number of Affected Small
Entities: The Small Business Administration (SBA) small business size
standards applicable to most analyses conducted to comply with the
Regulatory Flexibility Act are set forth in 13 CFR 121.201. These
regulations generally define small businesses as those with fewer than
a specified maximum number of employees or less than a specified level
of annual receipts for the entity's industrial sector or North American
Industry Classification System (NAICS) code. As provided by the
Regulatory Flexibility Act, and after consultation with the Small
Business Administration, the Office formally adopted an alternate size
standard as the size standard for the purpose of conducting an analysis
or making a certification under the Regulatory Flexibility Act for
patent-related regulations. See Business Size Standard for Purposes of
United States Patent and Trademark Office Regulatory Flexibility
Analysis for Patent-Related Regulations, 71 FR 67109 (Nov. 20, 2006),
1313 Off. Gaz. Pat. Office 60 (Dec. 12, 2006). This alternate small
business size standard is SBA's previously established size standard
that identifies the criteria entities must meet to be entitled to pay
reduced patent fees. See 13 CFR 121.802. If patent applicants identify
themselves on a patent application as qualifying for reduced patent
fees, the Office captures this data in the Patent Application Location
and Monitoring (PALM) database system, which tracks information on each
patent application submitted to the Office.
Unlike the SBA small business size standards set forth in 13 CFR
121.201, the size standard for USPTO is not industry-specific. The
Office's definition of a small business concern for Regulatory
Flexibility Act purposes is a business or other concern that: (1) Meets
the SBA's definition of a "business concern or concern" set forth in
13 CFR 121.105; and (2) meets the size standards set forth in 13 CFR
121.802 for the purpose of paying reduced patent fees, namely an
entity: (a) Whose number of employees, including affiliates, does not
exceed 500 persons; and (b) which has not assigned, granted, conveyed,
or licensed (and is under no obligation to do so) any rights in the
invention to any person who made it and could not be classified as an
independent inventor, or to any concern which would not qualify as a
non-profit organization or a small business concern under this
definition. See Business Size Standard for Purposes of United States
Patent and Trademark Office Regulatory Flexibility Analysis for Patent-
Related Regulations, 71 FR at 67112 (Nov 20, 2006), 1313 Off. Gaz. Pat.
Office at 63 (Dec. 12, 2006).
As discussed above, it is anticipated that 460 petitions for inter
partes review, 50 petitions for post-grant review and covered business
method patent review combined, and 50 petitions for derivation
proceedings will be filed in fiscal year 2013. The Office has reviewed
the percentage of patents for which inter partes reexamination was
requested from October 1, 2000 to September 23, 2011. A summary of that
review is provided in Table 1 above. As demonstrated by Table 1,
patents known to be owned by a small entity represent 32.79% of patents
for which inter partes reexamination was requested. Based on an
assumption that the same percentage of patents owned by small entities
will be subject to the new review proceedings, it is estimated that 151
patents owned by small entities would be affected by inter partes
review, and that 16 patents owned by small entities would be affected
by a post-grant or covered business method patent review.
For derivation proceedings, the Office has reviewed the percentage
of applications and patents for which an interference was declared in
fiscal year 2011. Applications and patents known to be owned by a small
entity represent 19.62% of applications and patents for which
interference was declared in FY 2011. Based on the assumption that the
same percentage of applications and patents owned by small entities
will be involved in a derivation proceeding, 20 small entity owned
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applications or patents would be affected by derivation proceeding.
The USPTO estimates that 2.5% of patent owners will file a request for
adverse judgment prior to a decision to institute and that another 2.5%
will file a request for adverse judgment or fail to participate after
initiation. Specifically, an estimated 21 patent owners will file a request
for adverse judgment or fail to participate after institution in inter
partes review, and an estimated 2 patent owners will do so in post-
grant and covered business method proceedings combined. Based on the
percentage of small entity owned patents that were the subject of inter
partes reexamination (32.79%) from October 1, 2000 to September 23,
2011, it is estimated that 7 small entities will file such requests or
fail to participate in inter partes review proceedings, and an
estimated 1 small entity will do so in post-grant or covered business
method patent review combined.
Under the proposed rules, prior to determining whether to institute
a review, the patent owner may file an optional patent owner
preliminary response to the petition. Given the new time period
requirements to file a petition for review before the Board relative to
patent enforcement proceedings and the desire to avoid the cost of a
trial and delays to related infringement actions, it is anticipated
that 90% of petitions, other than those for which a request for adverse
judgment is filed, will result in the filing of a patent owner
preliminary response. Where an inter partes review petition is filed
close to the expiration of the one-year period set forth in 35 U.S.C.
315(b), as amended, a patent owner would likely be advantaged by filing
a successful preliminary response. In view of these considerations, it
is anticipated that 90% patent owners will file a preliminary response.
Specifically, the Office estimates that 406 patent owners will file a
preliminary response to an inter partes review petition, and an
estimated 45 patent owners will file a preliminary response to a post-
grant or covered business method petition. Based on the percentage of
small entity owned patents that were the subject of inter partes
reexamination (32.79%), it is estimated that 133 small entities will
file a preliminary response to an inter partes review petition, and 15
small entities will file a preliminary response to a post-grant or
covered business method patent review petition in fiscal year 2013.
Under the proposed rules, the Office will determine whether to
institute a trial within three months after the earlier of: (1) The
submission of a patent owner preliminary response, (2) the waiver of
filing a patent owner preliminary response, or (3) the expiration of
the time period for filing a patent owner preliminary response. If the
Office decides not to institute a trial, the petitioner may file a
request for reconsideration of the Office's decision. In estimating the
number of requests for reconsideration, the Office considered the
percentage of inter partes reexaminations that were denied relative to
those that were ordered (24 divided by 342, or 7%) in fiscal year 2011.
See Reexaminations - FY 2011, http://www.uspto.gov/patents/Reexamination_
operational_statistic_through_FY2011Q4.pdf. The Office also considered the
impact of: (1) Patent owner preliminary responses under newly authorized
in 35 U.S.C. 313, as amended, and 35 U.S.C. 323, (2) the enhanced
thresholds for instituting reviews set forth in 35 U.S.C. 314(a), as
amended, and 35 U.S.C. 324(a), which would tend to increase the likelihood
of dismissing a petition for review, and (3) the more restrictive time
period for filing a petition for review in 35 U.S.C. 315(b), as amended,
and 35 U.S.C. 325(b), which would tend to reduce the likelihood of
dismissing a petition. Based on these considerations, it is estimated that
10% of the petitions for review (50 divided by 498) would be dismissed.
The Office predicts that it will institute 10 derivation
proceedings based on petitions seeking derivation filed in fiscal year
2013. This estimate is based on the low number of interference
proceedings declared, as well as the limited number of eligible
applications.
During fiscal year 2011, the Office issued 21 decisions following a
request for reconsideration of a decision on appeal in inter partes
reexamination. The average time from original decision to decision on
reconsideration was 4.4 months. Thus, the decisions on reconsideration
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were based on original decisions issued from July 2010 until June 2011.
During this time period, the Office mailed 63 decisions on appeals in
inter partes reexamination. See BPAI Statistics - Receipts and
Dispositions by Technology Center,
http://www.uspto.gov/ip/boards/bpai/stats/receipts/index.jsp (monthly data).
Based on the assumption that the same rate of reconsideration (21
divided by 63 or 33.333%) will occur, the Office estimates that 19
requests for reconsideration will be filed. Based on the percentage of
small entity owned patents that were the subject of inter partes
reexamination (32.79%) and the percentage of small entity owned patent
applications or patents that were the subject of an interference
declared in fiscal year 2010 (19.62%), it is estimated that 6 small
entities will file a request for a reconsideration of a decision
dismissing the petition for review or derivation in fiscal year 2013.
The Office reviewed motions, oppositions, and replies in a number
of contested trial proceedings before the trial section of the Board.
The review included determining whether the motion, opposition, and
reply were directed to patentability grounds and non-priority non-
patentability grounds. Based on the review, it is anticipated that: (1)
Inter partes reviews will have an average of 6.92 motions, oppositions,
and replies per trial after institution, (2) post-grant and covered
business method patent reviews will have an average of 8.89 motions,
oppositions, and replies per trial after institution, and (3)
derivation proceedings will have an average of 23.4 motions,
oppositions, and replies per trial after institution. Settlement is
estimated to occur in 20% of instituted trials at various points of the
trial. In trials that are settled, it is estimated that only 50% of the
noted motions, oppositions, and replies would be filed.
After a trial has been instituted but prior to a final written
decision, parties to a review or derivation proceeding may request an
oral hearing. It is anticipated that 466 requests for oral hearings
will be filed based on the number of requests for oral hearings in
inter partes reexamination, the stated desirability for oral hearings
during the legislative process, and the public input received prior to
this notice of proposed rulemaking. Based on the percentage of small
entity owned patents that were the subject of inter partes
reexamination (32.79%), it is estimated that 153 small entities will
file a request for oral hearing in the reviews and derivations
instituted in fiscal year 2013.
Parties to a review or derivation proceeding may file requests to
treat a settlement as business confidential, and requests for adverse
judgment. A written request to make a settlement agreement available
may also be filed. Parties to derivation proceedings may also file
arbitration agreements and awards. Given the short time period set for
conducting trials, it is anticipated that the alternative dispute
resolution options will be infrequently used. The Office estimates that
20 requests to treat a settlement as business confidential; 103
requests for adverse judgment, default adverse judgment, or settlement
notices; and 2 arbitration agreements and awards will be filed. The
Office also estimates that 20 requests to make a settlement available
will be filed. Based on the percentage of small entity owned patents
that were the subject of inter partes reexamination (32.79%) and the
percentage of small entity owned patentapplications or patents that
were the subject of an interference declared in fiscal year 2010 (19.62%),
it is estimated that 7 small entities will file a request to treat a
settlement as business confidential, 34 small entities will file a request
for adverse judgment, default adverse judgment notices, or settlement
notices, and 1 small entity will file an arbitration agreement and award
in the reviews and derivations instituted in fiscal year 2013.
Parties to a review or derivation proceeding may seek judicial
review of the final decision of the Board. Historically, 33% of
examiner's decisions in inter partes reexamination proceedings have
been appealed to the Board. It is anticipated that 16% of final
decisions of the Board would be appealed. The reduction in appeal rate
is based on the higher threshold for institution, the focused process,
and the experience of the Board in conducted contested cases.
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Therefore, it is estimated that 56 parties would seek judicial review
of the final decisions of the Board in reviews and derivations
instituted in fiscal year 2013. In addition, appeals in other final
decisions of the Board are anticipated to continue at the same rate,
but with a higher base rate of final decisions. Based on this
expectation, it is estimated that 138 parties would seek judicial
review of other final decisions of the Board. Furthermore, based on the
percentage of small entity owned patents that were the subject of inter
partes reexamination (32.79%) and the percentage of small entity owned
patent applications or patents that were the subject of an interference
declared in fiscal year 2010 (19.62%), it is estimated that 18 small
entities would seek judicial review of final decisions of the Board in
the reviews and derivations instituted in fiscal year 2013.
4. Description of the Reporting, Recordkeeping, and Other
Compliance Requirements of the Proposed Rule, Including an Estimate of
the Classes of Small Entities Which Will Be Subject to the Requirement
and the Type of Professional Skills Necessary for Preparation of the
Report or Record: Based on the filing trends of inter partes
reexamination requests, it is anticipated that petitions for review
will be filed across all technologies with approximately 50% being
filed in electrical technologies, approximately 30% in mechanical
technologies, and the remaining 20% in chemical technologies and
design. However, covered business method patent reviews would be
limited to business method patents that are not patents for
technological inventions. Under the proposed rules, a person who is not
the owner of a patent may file a petition to institute a review of the
patent, with a few exceptions. Given this, it is anticipated that a
petition for review is likely to be filed by an entity practicing in
the same or similar field as the patent. Therefore, it is anticipated
that 50% of the petitions for review will be filed in the electronic
field, 30% in the mechanical field, and 20% in the chemical or design
fields.
Based on the trends of declared contested cases in fiscal year
2011, it is anticipated that petitions for derivation will be filed
across all technologies with approximately 16% in electrical
technologies, approximately 17% in mechanical technologies, and the
remaining 67% in chemical technologies and design. A derivation
petition is likely to be filed by an entity practicing in the same or
similar field as the patent. Therefore, it is anticipated that 16% of
the petitions for review will be filed in the electronic field, 17% in
the mechanical field, and 67% in the chemical or design fields.
Preparation of the petition would require analyzing the patent
claims, locating evidence supporting arguments of unpatentability, and
preparing the petition seeking review of the patent. This notice
provides the proposed procedural requirements that are common for the
new trials. Additional requirements are provided in contemporaneous
trial specific proposed rulemaking. The procedures for petitions to
institute an inter partes review are proposed in §§ 42.5, 42.6,
42.8, 42.11, 42.13, 42.20, 42.21, 42.22, 42.24(a)(1), 42.63, 42.65, and
42.101 through 42.105. The procedures for petitions to institute a
post-grant review are proposed in §§ 42.5, 42.6, 42.8, 42.11,
42.13, 42.20, 42.21, 42.22, 42.24(a)(2), 42.63, 42.65, and 42.201
through 42.205. The procedures for petitions to institute a covered
business method patent review are proposed in §§ 42.5, 42.6,
42.8, 42.11, 42.13, 42.20, 42.21, 42.22, 42.24(a)(3), 42.63, 42.65,
42.203, 42.205, and 42.302 through 42.304. The procedures for petitions
to institute a derivation proceeding are proposed in §§ 42.5,
42.6, 42.8, 42.11, 42.13, 42.20, 42.21, 42.22, 42.24(a)(4),42.63,
42.65, and 42.402 through 42.406.
The skills necessary to prepare a petition for review and to
participate in a trial before the Patent Trial and Appeal Board would
be similar to those needed to prepare a request for inter partes
reexamination, to represent a party in an inter partes reexamination,
and to represent a party in an interference proceeding before the
Patent Trial and Appeal Board. The level of skill is typically
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possessed by a registered patent practitioner having devoted
professional time to the particular practice area, typically under the
supervision of a practitioner skilled in the particular practice area.
Where authorized by the Board, a non-registered practitioner may be
admitted pro hac vice, on a case-by-case basis based on the facts and
circumstances of the trial and party, as well as the skill of the
practitioner.
The cost of preparing a petition for inter partes review is
anticipated to be the same as the cost for preparing a request for
inter partes reexamination. The American Intellectual Property Law
Association's AIPLA Report of the Economic Survey 2011 reported that
the average cost of preparing a request for inter partes reexamination
was $46,000. Based on the work required to prepare and file such a
request, the Office considers the reported cost as a reasonable
estimate. Accordingly, the Office estimates that the cost of preparing
a petition for inter partes review would be $46,000 (including expert
costs).
The cost of preparing a petition for post-grant or covered business
method patent review is estimated to be 33.333% higher than the cost of
preparing a petition for inter partes review because the petition for
post-grant or covered business method patent review may seek to
institute a proceeding on additional grounds such as subject matter
eligibility. Therefore, the Office estimates that the cost of preparing
a petition for post-grant or covered business method patent review
would be $61,333. It is expected that petitions for derivation would
have the same complexity and cost as a petition for post-grant review
because derivation proceedings raise issues of conception and
communication, which have similar complexity to the issues that can be
raised in a post-grant review, i.e., public use, sale and written
description. Thus, the Office estimates that the cost of preparing a
petition for derivation would also be $61,333.
The filing of a petition for review would also require payment by
the petitioner of the appropriate petition fee to recover the aggregate
cost for providing the review. The appropriate petition fee would be
determined by the number of claims for which review is sought and the
type of review. The proposed fees for filing a petition for inter
partes review are: $27,200 for requesting review of 20 or fewer claims,
$34,000 to request review of 21 to 30 claims, $40,800 to request review
of 31 to 40 claims, $54,400 to request review of 41 to 50 claims, $68,000
to request review of 51 to 60 claims, and an additional $27,200 to request
review of additional groups of 10 claims. The fees for filing a petition
for post-grant or covered business method patent review would be: $35,800
to request review of 20 or fewer claims, $44,750 to request review of 21
to 30 claims, $53,700 to request review of 31 to 40 claims, $71,600 to
request review of 41 to 50 claims, $89,500 to request review of 51 to 60
claims, and an additional $35,800 to request review of additional groups
of 10 claims.
In setting fees, the estimated information technology cost to
establish the process and maintain the filing and storage system
through 2017 is to be recovered by charging each petition an IT fee
that has a base component of $1,705 for requests to review 20 or fewer
claims. The IT component fees would be $2,122 for requesting review of
21-30 claims, $2,557 for requesting review of 31-40 claims, $3,409 for
requesting review of 41-50 claims, $4,267 for requesting review of 51-
60 claims, and an additional $1,705 for requesting review of additional
groups of 10 claims. The remainder of the fee is to recover the cost
for judges to determine whether to institute a review and conduct the
review, together with a proportionate share of indirect costs, e.g.,
rent, utilities, additional support, and administrative costs. Based on
the direct and indirect costs, the fully burdened cost per hour for
judges to decide a petition and conduct a review is estimated to be
$258.32.
For a petition for inter partes review with 20 or fewer challenged
claims, it is anticipated that 98.7 hours of judge time would be
required. For 21 to 30 challenged claims, an additional 24.7 hours is
anticipated for a total of 123.4 hours of judge time. For 31 to 40
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challenged claims, an additional 49.3 hours is anticipated for a total
of 148 hours of judge time. For 41 to 50 challenged claims, an
additional 98.7 hours is anticipated for a total of 197.4 hours of
judge time. For 51 to 60 claims, an additional 148 hours is anticipated
for a total of 246.7 hours of judge time. The increase in adjustment
reflects the added complexity that typically occurs as more claims are
in dispute.
For a petition for post-grant or covered business method patent
review with 20 or fewer challenged claims, it is anticipated that 132
hours of judge time will be required. For 21 to 30 challenged claims,
an additional 33 hours is anticipated for a total of 165 hours of judge
time. For 31 to 40 challenged claims, an additional 66 hours is
anticipated for a total of 198 hours of judge time. For 41 to 50
challenged claims, an additional 132 hours is anticipated for a total
of 264 hours of judge time. For 51 to 60 challenged claims, an
additional 198 hours is anticipated for a total of 330 hours of judge
time. The increase in adjustment reflects the added complexity that
typically occurs as more claims are in dispute.
The proposed rules would permit the patent owner to file a
preliminary response to the petition setting forth the reasons why no
review should be initiated. The procedures for a patent owner to file a
preliminary response as an opposition are proposed in §§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.23, 42.24(b), 42.51, 42.52, 42.53, 42.54,
42.63, 42.64, 42.65, 42.107, 42.120, 42.207, and 42.220. The patent
owner is not required to file a preliminary response. The Office
estimates that the preparation and filing of a patent owner preliminary
response would require 100 hours of professional time and cost $34,000
(including expert costs). The AIPLA Report of the Economic Survey 2011
reported that the average cost for inter partes reexamination including
of the request ($46,000), the first patent owner response, and third
party comments was $75,000 (see I-175) and the median billing rate for
professional time of $340 per hour for attorneys in private firms (see
8). Thus, the cost of the first patent owner reply and the third party
statement is $29,000. The Office finds these costs to be reasonable
estimates. The patent owner reply and third party statement, however,
occur after the examiner has made an initial threshold determination
and made only the appropriate rejections. Accordingly, it is
anticipated that filing a patent owner preliminary response to a
petition for review would cost more than the initial reply in a
reexamination, an estimated $34,000 (including expert costs).
The Office will determine whether to institute a trial within three
months after the earlier of: (1) The submission of a patent owner
preliminary response, (2) the waiver of filing a patent owner
preliminary response, or (3) the expiration of the time period for
filing a patent owner preliminary response. If the Office decides not
to institute a trial, the petitioner may file a request for
reconsideration of the Office's decision. It is anticipated that a
request for reconsideration will require 80 hours of professional time
to prepare and file, for a cost of $27,200. This estimate is based on
the complexity of the issues and desire to avoid time bars imposed by
35 U.S.C. 315(b), as amended, and 35 U.S.C. 325(b).
Following institution of a trial, the parties may be authorized to
file various motions, e.g., motions to amend and motions for additional
discovery. Where a motion is authorized, an opposition may be
authorized, and where an opposition is authorized, a reply may be
authorized. The procedures for filing a motion are proposed in
§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.22, 42.24(a)(5), 42.51,
42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.121, 42.221, 42.123, and
42.223. The procedures for filing an opposition are proposed in
§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.23, 42.24(b), 42.51,
42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.107, 42.120, 42.207, and
42.220. The procedures for filing a reply are proposed in §§ 42.6,
42.8, 42.11, 42.13, 42.21, 42.23, 42.24(c), 42.51, 42.52, 42.53,
42.54, 42.63, and 42.65. As discussed previously, the Office estimates
that the average inter partes review will have 6.92 motions,
oppositions, and replies after institution. The average post-grant or
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covered business method patent review will have 8.89 motions,
oppositions, and replies after institution. The average derivation
proceeding is anticipated to have 23.4 motions, oppositions, and
replies after institution.
The AIPLA Report of the Economic Survey 2011 reported that the
average cost in contested cases before the trial section of the Board
prior to the priority phase was $322,000 per party. Because of the
overlap of issues in patentability grounds, it is expected that the
cost per motion will decline as more motions are filed in a proceeding.
It is estimated that a motion, opposition, or reply in a derivation
would cost $34,000 (including expert costs) which is estimated by
dividing the total public cost for all motions in current contested
cases divided by the estimated number of motions in derivations under
35 U.S.C. 135, as amended. The cost of a motion, opposition, or reply
in a post-grant review is estimated at $44,200 (including expert
costs), reflecting the reduction in overlap between motions relative to
derivation. The cost of a motion, opposition or reply in an inter
partes review would be $47,600 (including expert costs). Based on the
work required to file and prepare such briefs, the Office considers the
reported cost as a reasonable estimate.
After a trial has been instituted but prior to a final written
decision, parties to a review or derivation proceeding may request an
oral hearing. The procedure for filing requests for oral argument is
proposed in § 42.70. The AIPLA Report of the Economic Survey 2011
reported that the third quartile cost of an ex parte appeal with an oral
argument is $12,000, while the third quartile cost of an ex parte
appeal without an oral argument is $6,000. In view of the reported
costs, which the Office finds reasonable, and the increased complexity
of an oral hearing with multiple parties, it is estimated that the cost
per party for oral hearings would be $6,800 or $800 more than the
reported third quartile cost for an ex parte oral hearing.
Parties to a review or derivation proceeding may file requests to
treat a settlement as business confidential, request for adverse
judgment, and arbitration agreements and awards. A written request to
make a settlement agreement available may also be filed. The procedures
to file requests that a settlement be treated as business confidential
are proposed in §§ 42.74(c) and 42.409. The procedures to file
requests for adverse judgment are proposed in § 42.73(b). The
procedures to file arbitration agreements and awards are proposed
§ 42.410. The procedures to file requests to make a settlement agreement
available are proposed in § 42.74(c)(2). It is anticipated that
requests to treat a settlement as business confidential will require 2
hours of professional time or $680. It is anticipated that requests for
adverse judgment will require 1 hour of professional time or $340. It
is anticipated that arbitration agreements and awards will require 4
hours of professional time or $1,360. It is anticipated that requests
to make a settlement agreement available will require 1 hour of
professional time or $340. The requests to make a settlement agreement
available will also require payment of a fee of $400 specified in
proposed § 42.15(d). The fee proposed would be the same as
currently set forth in § 41.20(a) for petitions to the Chief
Administrative Patent Judge.
Parties to a review proceeding may seek judicial review of the
judgment of the Board. The procedures to file notices of judicial
review of a Board decision, including notices of appeal and notices of
election provided for in 35 U.S.C. 141, 142, 145, and 146, are proposed
in §§ 90.1 through 90.3. The submission of a copy of a notice
of appeal or a notice of election is anticipated to require 6 minutes
of professional time at a cost of $34.
5. Description of Any Significant Alternatives to the Proposed
Rules Which Accomplish the Stated Objectives of Applicable Statutes and
Which Minimize Any Significant Economic Impact of the Rules on Small
Entities:
Size of petitions and motions: The Office considered whether to
apply a page limit and what an appropriate page limit would be. The
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Office does not currently have a page limit on inter partes
reexamination requests. The inter partes reexamination requests from
October 1, 2010 to June 30, 2011, averaged 246 pages. Based on the
experience of processing inter partes reexamination requests, the
Office finds that the very large size of the requests has created a
burden on the Office that hinders the efficiency and timeliness of
processing the requests, and creates a burden on patent owners. The
quarterly reported average processing time from the filing of a request
to the publication of a reexamination certificate ranged from 28.9
months to 41.7 months in fiscal year 2009, from 29.5 months to 37.6
months in fiscal year 2010, and from 31.9 to 38.0 months in fiscal year
2011. See Reexaminations - FY 2011, http://www.uspto.gov/patents/
Reexamination_operational_statistic_through_FY2011Q4.pdf.
By contrast, the Office has a page limit on the motions filed in
contested cases, except where parties are specifically authorized to
exceed the limitation. The typical contested case proceeding is subject
to a standing order that sets a 50 page limit for motions and
oppositions on priority, a 15 page limit for miscellaneous motions
(§ 41.121(a)(3)) and oppositions (§ 41.122), and a 25 page
limit for other motions (§ 41.121(a)(2)) and oppositions to other
motions. In typical proceedings, replies are subject to a 15 page limit
if directed to priority, 5 page limit for miscellaneous issues, and 10
page limit for other motions. The average contested case was terminated
in 10.1 months in fiscal year 2009, in 12 months in fiscal year 2010,
and 9 months in fiscal year 2011. The percentage of contested cases
terminated within 2 years was 93.7% in fiscal year 2009, 88.0% in
fiscal year 2010, and 94.0% in fiscal year 2011. See BPAI Statistics -
Performance Measures,
http://www.uspto.gov/ip/boards/bpai/stats/perform/index.jsp.
Comparing the average time period for terminating a contested case,
10.0 to 12.0 months, with the average time period, during fiscal years
2009 through 2011, for completing an inter partes reexamination, 28.9
to 41.7 months, indicates that the average interference takes from 24%
(10.0/41.7) to 42% (12.0/28.9) of the time of the average inter partes
reexamination. While several factors contribute to the reduction in
time, limiting the size of the requests and motions is considered a
significant factor. Proposed § 42.24 would provide page limits for
petitions, motions, oppositions, and replies. 35 U.S.C. 316(b), as
amended, and 35 U.S.C. 326(b) provide considerations that are to be
taken into account when prescribing regulations including the integrity
of the patent system, the efficient administration of the Office, and
the ability to complete timely the trials. The page limits proposed in
these rules are consistent with these considerations.
Federal courts routinely use page limits in managing motions
practice as "[e]ffective writing is concise writing." Spaziano v.
Singletary, 36 F.3d 1028, 1031 n.2 (11th Cir. 1994). Many district
courts restrict the number of pages that may be filed in a motion
including, for example, the District of Delaware, the District of New
Jersey, the Eastern District of Texas, the Northern, Central, and
Southern Districts of California, and the Eastern District of Virginia.
Federal courts have found that page limits ease the burden on both
the parties and the courts, and patent cases are no exception. Eolas
Techs., Inc. v. Adobe Sys., Inc., No. 6:09-CV-446, at 1 (E.D. Tex.
Sept. 2, 2010) ("The Local Rules' page limits ease the burden of
motion practice on both the Court and the parties."); Blackboard, Inc.
v. Desire2Learn, Inc., 521 F. Supp. 2d 575, 576 (E.D. Tex. 2007) (The
parties "seem to share the misconception, popular in some circles,
that motion practice exists to require federal judges to shovel through
steaming mounds of pleonastic arguments in Herculean effort to uncover
a hidden gem of logic that will ineluctably compel a favorable ruling.
Nothing could be farther from the truth."); Broadwater v. Heidtman
Steel Prods., Inc., 182 F. Supp. 2d 705, 710 (S.D. Ill. 2002)
("Counsel are strongly advised, in the future, to not ask this Court
for leave to file any memoranda (supporting or opposing dispositive
motions) longer than 15 pages. The Court has handled complicated patent
cases and employment discrimination cases in which the parties were
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able to limit their briefs supporting and opposing summary judgment to
10 or 15 pages." (Emphasis omitted)).
The Board's contested cases experience with page limits in motions
practice is consistent with that of the federal courts. The Board's use
of page limits has shown it to be beneficial without being unduly
restrictive for the parties. Page limits have encouraged the parties to
focus on dispositive issues, easing the burden of motions practice on
the parties and on the Board.
The Board's contested cases experience with page limits is informed
by its use of different approaches over the years. In the early 1990s,
page limits were not routinely used for motions, and the practice
suffered from lengthy and unacceptable delays. To reduce the burden on
the parties and on the Board and thereby reduce the time to decision, the
Board instituted page limits in the late 1990s for every motion. Page limit
practice was found to be effective in reducing the burdens on the parties
and improving decision times at the Board. In 2006, the Board revised the
page limit practice and allowed unlimited findings of fact and
generally limited the number of pages containing argument. Due to
abuses of the system, the Board recently reverted back to page limits
for the entire motion (both argument and findings of fact).
The Board's current page limits are consistent with the 25 page
limits in the Northern, Central, and Southern Districts of California,
and the Middle District of Florida and exceed the limits in the
District of Delaware (20), the Northern District of Illinois (15), the
District of Massachusetts (20), the Eastern District of Michigan (20),
the Southern District of Florida (20), and the Southern District of
Illinois (20).
In a typical proceeding before the Board, a party may be authorized
to file a single motion for unpatentability based on prior art, a
single motion for unpatentability based upon failure to comply with 35
U.S.C. 112, lack of written description, and/or enablement, and
potentially another motion for lack of compliance with 35 U.S.C. 101,
although a 35 U.S.C. 101 motion may be required to be combined with the
35 U.S.C. 112 motion. Each of these motions is currently limited to 25
pages in length, unless good cause is shown that the page limits are
unduly restrictive for a particular motion.
A petition requesting the institution of a trial proceeding would
be similar to motions currently filed with the Board. Specifically,
petitions to institute a trial seek a final written decision that the
challenged claims are unpatentable, where derivation is a form of
unpatentability. Accordingly, a petition to institute a trial based on
prior art would, under current practice, be limited to 25 pages, and by
consequence, a petition raising unpatentability based on prior art and
unpatentability under 35 U.S.C. 101 and/or 112 would be limited to 50
pages.
Under the proposed rules, an inter partes review petition would be
based upon any grounds identified in 35 U.S.C. 311(b), as amended,
i.e., only a ground that could be raised under 35 U.S.C. 102 or 103 and
only on the basis of patents or printed publications. Generally, under
current practice, a party is limited to filing a single prior art
motion, limited to 25 pages in length. The proposed rule would provide
up to 50 pages in length for a motion requesting inter partes review.
Thus, as the proposed page limit doubles the default page limit
currently set for a motion before the Board, a 50 page limit is
considered sufficient in all but exceptional cases and is consistent
with the considerations provided in 35 U.S.C. 316(b), as amended.
Under the proposed rules, a post-grant review petition would be
based upon any grounds identified in 35 U.S.C. 321(b), e.g., failure to
comply with 35 U.S.C. 101, 102, 103, and 112 (except best mode). Under
current practice, a party would be limited to filing two or three
motions, each limited to 25 pages, for a maximum of 75 pages. Where
there is more than one motion for unpatentability based upon different
statutory grounds, the Board's experience is that the motions contain
similar discussions of technology and claim constructions. Such overlap
is unnecessary where a single petition for unpatentability is filed.
Thus, the proposed 70 page limit is considered sufficient in all but
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exceptional cases.
Covered business method patent review is similar in scope to that
of post-grant review, as there is substantial overlap in the statutory
grounds permitted for review. Thus, the proposed page limit for
proposed covered business method patent reviews is 70 pages, which is
the same as that proposed for post-grant review.
Petitions to institute derivation proceedings raise a subset of
issues that are currently raised in interferences in a motion for
judgment on priority of invention. Currently, motions for judgment on
priority of invention, including issues such as conception,
corroboration, and diligence, are generally limited to 50 pages. Thus,
the proposed 50 page limit is considered sufficient in all but
exceptional cases.
The proposed rule would provide that petitions to institute a trial
must comply with the stated page limits but may be accompanied by a
motion that seeks to waive the page limits. The petitioner must show in
the motion how a waiver of the page limits is in the interests of
justice. A copy of the desired non-page limited petition must accompany
the motion. Generally, the Board would decide the motion prior to
deciding whether to institute the trial.
Current Board practice provides a limit of 25 pages for other
motions and 15 pages for miscellaneous motions. The Board's experience
is that such page limits are sufficient for the parties filing them and
do not unduly burden the opposing party or the Board. Petitions to
institute a trial would generally replace the current practice of
filing motions for unpatentability, as most motions for relief are
expected to be similar to the current interference miscellaneous motion
practice. Accordingly, the proposed 15 page limit is considered
sufficient for most motions but may be adjusted where the limit is
determined to be unduly restrictive for the relief requested.
Proposed § 42.24(b) would provide page limits for oppositions
filed in response to motions. Current contested case practice provides
an equal number of pages for an opposition as its corresponding motion.
This is generally consistent with motions practice in federal courts.
The proposed rule would continue the current practice.
Proposed § 42.24(c) would provide page limits for replies.
Current contested case practice provides a 15 page limit for priority
motion replies, a 5 page limit for miscellaneous (procedural) motion
replies, and a 10 page limit for all other motions. The proposed rule
is consistent with current contested case practice for procedural
motions. The proposed rule would provide a 15 page limit for reply to
petitions requesting a trial, which the Office believes is sufficient
based on current practice. Current contested case practice has shown
that such page limits do not unduly restrict the parties and, in fact,
have provided sufficient flexibility to parties to not only reply to
the motion but also help to focus on the issues. Thus, it is
anticipated that default page limits would minimize the economic impact
on small entities by focusing on the issues in the trials.
The Leahy-Smith America Invents Act requires that the Director, in
prescribing rules for the inter partes, post-grant, and covered
business method patent reviews, consider the effect of the rules on the
economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to complete
timely the instituted proceedings. See 35 U.S.C. 316(b), as amended,
and 35 U.S.C. 326(b). In view of the actual results of the duration of
proceedings in inter partes reexamination (without page limits) and
contested cases (with page limits), proposing procedures with
reasonable page limits would be consistent with the objectives set
forth in the Leahy-Smith America Invents Act. Based on our experience
on the time needed to complete a non-page limited proceeding, the
option of non-page limited proceedings was not adopted.
Fee Setting: 35 U.S.C. 311(a), as amended, and 35 U.S.C. 321(a) require
the Director to establish fees to be paid by the person requesting the
review in such amounts as the Director determines to be reasonable,
considering the aggregate costs of the review. In contrast to current 35
U.S.C. 311(b) and 312(c), the Leahy-Smith America Invents Act requires the
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Director to establish more than one fee for reviews based on the total cost
of performing the reviews, and does not provide for refund of any part of
the fee when the Director determine that the review should not be initiated.
35 U.S.C. 312(a)(1), as amended, and 35 U.S.C. 322(a)(1) further
require that the fee established by the Director under 35 U.S.C.
311(a), as amended, or 35 U.S.C. 321 accompany the petition on filing.
Accordingly, in interpreting the fee setting authority in 35 U.S.C.
311(a), as amended, and 35 U.S.C. 321(a), it is reasonable that the
Director should set a number of fees for filing a petition based on the
anticipated aggregate cost of conducting the review depending on the
complexity of the review, and require payment of the fee upon filing of
the petition.
Based on experience with contested cases and inter partes
reexamination proceedings, the following characteristics of requests
were considered as potential factors for fee setting as each would
likely impact the cost of providing the new services. The Office also
considered the relative difficulty in administrating each option in
selecting the characteristics for which different fees should be paid
for requesting review.
I. Adopted Option. Number of claims for which review is requested.
The number of claims often impacts the complexity of the request and
increases the demands placed on the deciding officials. Cf. In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1309 (Fed.
Cir. 2011) (limiting number of asserted claims is appropriate to manage
a patent case efficiently). Moreover, the number of claims for which
review is requested can be easily determined and administered, which
avoids delays in the Office and the impact on the economy or patent
system that would occur if an otherwise meritorious request is refused
due to improper fee payment. Any subsequent petition would be time
barred in view 35 U.S.C. 315(b), as amended, or 35 U.S.C. 325.
II. Alternative Option I. Number of grounds for which review is
requested. The Office has experience with large numbers of cumulative
grounds being presented in inter partes reexaminations which often add
little value to the proceedings. Allowing for a large number of grounds
to be presented on payment of an additional fee(s) is not favored.
Determination of the number of grounds in a request may be contentious
and difficult and may result in a large amount of high-level petition
work. As such, the option would have a negative impact on small
entities. Moreover, interferences instituted in the 1980s and early
1990s suffered from this problem as there was no page limit for motions
and the parties had little incentive to focus the issues for decision.
The resulting interference records were often a collection of disparate
issues and evidence. This led to lengthy and unwarranted delays in
deciding interference cases as well as increased costs for parties and
the Office. Accordingly, this alternative is inconsistent with
objectives of the Leahy-Smith America Invents Act that the Director, in
prescribing rules for the inter partes, post-grant, and covered
business method patent reviews, consider the effect of the rules on the
economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to complete
timely the instituted proceedings.
III. Alternative Option II. Pages of argument. The Office has
experience with large requests in inter partes reexamination in which
the merits of the proceedings could have been resolved in a shorter
request. Allowing for unnecessarily large requests on payment of an
additional fee(s) is not favored. Moreover, determination of what
should be counted as "argument" as compared with "evidence" has
often proven to be contentious and difficult as administered in the
current inter partes reexamination appeal process.
In addition, the trial section of the Board recently experimented
with motions having a fixed page limit for the argument section and an
unlimited number of pages for the statement of facts. Unlimited pages
for the statement of facts led to a dramatic increase in the number of
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alleged facts and pages associated with those facts. For example, one
party used approximately 10 pages for a single "fact" that merely cut
and pasted a portion of a declarant's cross-examination. Based upon the
trial section's experience with unlimited pages of facts, the Board
recently reverted back to a fixed page limit for the entire motion
(argument and facts). Accordingly, this alternative is inconsistent
with objectives of the Leahy-Smith America Invents Act that the
Director, in prescribing rules for the inter partes, post-grant, and
covered business method patent reviews, consider the effect of the
rules on the economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to complete
timely the instituted proceedings.
IV. Alternative Option III. The Office considered an alternative
fee setting regime in which fees would be charged at various steps in
the review process, a first fee on filing of the petition, a second fee
if instituted, a third fee on filing a motion in opposition to amended
claims, etc. The alternative fee setting regime would hamper the
ability of the Office to complete timely reviews, would result in
dismissal of pending proceedings with patentability in doubt due to
non-payment of required fees by third parties, and would be
inconsistent with 35 U.S.C. 312, as amended, and 35 U.S.C. 322 that
require the fee established by the Director be paid at the time of
filing the petition. Accordingly, this alternative is inconsistent with
objectives of the Leahy-Smith America Invents Act that the Director, in
prescribing rules for the inter partes, post-grant, and covered
business method patent reviews, consider the effect of the rules on the
economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to complete
timely the instituted proceedings.
V. Alternative Option IV. The Office considered setting reduced
fees for small and micro entities and to provide refunds if a review is
not instituted. The Office shall set the fee to recover the cost of
providing the services under 35 U.S.C. 41(d)(2)(a). Fees set under this
authority are not reduced for small entities, see 35 U.S.C. 42(h)(1),
as amended. Moreover, the Office does not have authority to refund fees
that were not paid by mistake or in excess of that owed. See 35 U.S.C.
42(d).
Discovery: The Office considered a procedure for discovery similar
to the one available during district court litigation. Discovery of
that scope has been criticized sharply, particularly when attorneys use
discovery tools as tactical weapons, which hinder the "just, speedy,
and inexpensive determination of every action and proceedings." See
Introduction to An E-Discovery Model Order, available at
http://www.cafc.uscourts.gov/images/stories/announcements/Ediscovery_
Model_Order.pdf. Accordingly, this alternative would have been inconsistent
with objectives of the Leahy-Smith America Invents Act that the Director,
in prescribing rules for the inter partes, post-grant, and covered
business method patent reviews, consider the effect of the rules on the
economy, the integrity of the patent system, the efficient administration of
the Office, and the ability of the Office to complete timely the instituted
proceedings.
Additional discovery increases trial costs and increases the
expenditures of time by the parties and the Board. The Board's
experience in contested cases, however, is that such showings are often
lacking and authorization for additional discovery is expected to be
rare. While an interests-of-justice standard would be employed in
granting additional discovery in inter partes reviews and derivation
proceedings, the post-grant review and covered business method patent
review would employ a good cause standard in granting additional
discovery.
To promote effective discovery, the proposed rule would require a
showing that additional requested discovery would be productive in
inter partes reviews and derivation proceedings. An interests-of-
justice standard for additional discovery is proposed for inter partes
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reviews and derivation proceedings. This standard is consistent with
the considerations identified in 35 U.S.C. 316(b) and 135(b), as
amended, including the efficient administration of the Board and the
Board's ability to complete timely trials. Further, the proposed
interests-of-justice standard is consistent with 35 U.S.C. 316(a)(5),
as amended, which states that discovery other than depositions of
witnesses submitting affidavits and declarations be what is otherwise
necessary in the interests of justice.
Good cause and interests of justice are closely related standards,
but the interests-of-justice standard is slightly higher than good
cause. While a good cause standard requires a party to show a specific
factual reason to justify the needed discovery, under the interests-of-
justice standard, the Board would look at all relevant factors.
Specifically, to show good cause, a party would be required to make a
particular and specific demonstration of fact. Under the interests-of-
justice standard, the moving party would also be required to show that
it was fully diligent in seeking discovery and that there is no undue
prejudice to the non-moving party. The interests-of-justice standard
covers considerable ground, and in using such a standard, the Board
expects to consider whether the additional discovery is necessary in
light of the totality of the relevant circumstances.
The Office is proposing a default scheduling order to provide
limited discovery as a matter of right and provide parties with the
ability to seek additional discovery on a case-by-case basis. In
weighing the need for additional discovery, should a request be made,
the Board would consider the economic impact on the opposing party.
This would tend to limit additional discovery where a party is a small
entity.
Pro Hac Vice: The Office considered whether to allow counsel to
appear pro hac vice. In certain cases, highly skilled, but non-
registered, attorneys have appeared satisfactorily before the Board in
contested cases. The Board may recognize counsel pro hac vice during a
proceeding upon a showing of good cause. The Board may impose
conditions in recognizing counsel pro hac vice, including an agreement
that counsel is bound by the Office's Code of Professional
Responsibility. Proceedings before the Office can be technically
complex. The grant of a motion to appear pro hac vice is a
discretionary action taking into account the specifics of the
proceedings. Similarly, the revocation of pro hac vice is a
discretionary action taking into account various factors, including
incompetence, unwillingness to abide by the Office's Code of
Professional Responsibility, prior findings of misconduct before the
Office in other proceedings, and incivility.
The Board's past practice has required the filing of a motion by a
registered patent practitioner seeking pro hac vice representation
based upon a showing of: (1) How qualified the unregistered
practitioner is to represent the party in the proceeding when measured
against a registered practitioner, and, (2) whether the party has a
genuine need to have the particular unregistered practitioner represent
it during the proceeding. This practice has proven effective in the
limited number of contested cases where such requests have been
granted. The proposed rule, if adopted, would allow for this practice
in the new proceedings authorized by the Leahy-Smith America Invents
Act.
The proposed rules would provide a limited delegation to the Board
under 35 U.S.C. 2(b)(2) and 32 to regulate the conduct of counsel in
Board proceedings. The proposed rule would delegate to the Board the
authority to conduct counsel disqualification proceedings while the
Board has jurisdiction over a proceeding. The rule would also delegate
to the Chief Administrative Patent Judge the authority to make final a
decision to disqualify counsel in a proceeding before the Board for the
purposes of judicial review. This delegation would not derogate from
the Director the prerogative to make such decisions, nor would it
prevent the Chief Administrative Patent Judge from further delegating
authority to an administrative patent judge.
The Office considered broadly permitting practitioners not
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registered to practice by the Office to represent parties in trial as
well as categorically prohibiting such practice. A prohibition on the
practice would be inconsistent with the Board's experience, and more
importantly, might result in increased costs particularly where a small
entity has selected its district court litigation team for
representation before the Board and has a patent review filed after
litigation efforts have commenced. Alternatively, broadly making the
practice available would create burdens on the Office in administering
the trials and in completing the trial within the established time
frame, particularly if the selected practitioner does not have the
requisite skill. In weighing the desirability of admitting a
practitioner pro hac vice, the economic impact on the party in interest
would be considered which would tend to increase the likelihood that a
small entity could be represented by a non-registered practitioner.
Accordingly, the alternatives to eliminate pro hac vice practice or to
permit it more broadly would have been inconsistent with objectives of
the Leahy-Smith America Invents Act that the Director, in prescribing
rules for the inter partes, post-grant, and covered business method
patent reviews, consider the effect of the rules on the economy, the
integrity of the patent system, the efficient administration of the
Office, and the ability of the Office to complete timely the instituted
proceedings.
Threshold for Instituting a Review: The Office considered whether
the threshold for instituting a review could be set as low as or lower
than the threshold for ex parte reexamination. This alternative could
not be adopted in view of the statutory requirements in 35 U.S.C. 314,
as amended, and 35 U.S.C. 324.
Default Electronic Filing: The Office considered a paper filing
system and a mandatory electronic filing system (without any
exceptions) as alternatives to the proposed requirement that all papers
are to be electronically filed, unless otherwise authorized.
Based on the Office's experience, a paper based filing system
increases delay in processing papers, delay in public availability, and
the chance that a paper may be misplaced or made available to an
improper party if confidential. Accordingly, the alternative of a paper
based filing system would have been inconsistent with objectives of the
Leahy-Smith America Invents Act that the Director, in prescribing rules
for the inter partes, post-grant, and covered business method patent
reviews, consider the effect of the rules on the economy, the integrity of
the patent system, the efficient administration of the Office, and the
ability of the Office to complete timely the instituted proceedings.
An electronic filing system (without any exceptions) that is
rigidly applied would result in unnecessary cost and burdens,
particularly where a party lacks the ability to file electronically. By
contrast, if the proposed option is adopted, it is expected that the
entity size and sophistication would be considered in determining
whether alternative filing methods would be authorized.
6. Identification, to the Extent Practicable, of All Relevant
Federal Rules Which May Duplicate, Overlap, or Conflict With the
Proposed Rules:
37 CFR 1.99 provides for the submission of information after
publication of a patent application during examination by third
parties.
37 CFR 1.171-1.179 provide for applications to reissue a patent to
correct errors, including where a claim in a patent is overly broad.
37 CFR 1.291 provides for the protest against the issuance of a
patent during examination.
37 CFR 1.321 provides for the disclaimer of a claim by a patentee.
37 CFR 1.501 and 1.502 provide for ex parte reexamination of
patents. Under these rules, a person may submit to the Office prior art
consisting of patents or printed publications that are pertinent to the
patentability of any claim of a patent, and request reexamination of
any claim in the patent on the basis of the cited prior art patents or
printed publications. Consistent with 35 U.S.C. 302-307, ex parte
reexamination rules provide a different threshold for initiation,
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require the proceeding to be conducted by an examiner with a right of
appeal to the Patent Trial and Appeal Board, and allow for limited
participation by third parties.
37 CFR 1.902-1.997 provide for inter partes reexamination of
patents. Similar to ex parte reexamination, inter partes reexamination
provides a procedure in which a third party may request reexamination
of any claim in a patent on the basis of the cited prior art patents
and printed publication. The inter partes reexamination practice will
be eliminated, except for requests filed before the effective date,
September 16, 2012. See § 6(c)(3)(C) of the Leahy-Smith America
Invents Act.
Other countries have their own patent laws, and an entity desiring
a patent in a particular country must make an application for patent in
that country, in accordance with the applicable law. Although the
potential for overlap exists internationally, this cannot be avoided
except by treaty (such as the Paris Convention for the Protection of
Industrial Property, or the Patent Cooperation Treaty (PCT)).
Nevertheless, the Office believes that there are no other duplicative
or overlapping foreign rules.
The notice also proposes changes to the rule of practice to
consolidate the procedure for notifying the Office and other parties in
the proceeding when a party seeks judicial review of a Board decision.
In fiscal year 2010, the Board issued 7,312 decisions, and only 61
notices of appeal were filed with the Office and no civil action was
commenced. In fiscal year 2011, the Board issued 7,551 decisions, and
only 100 notices of appeal were filed with the Office and 7 civil
actions were commenced. As such, the average rate for fiscal years 2010
and 2011 was 1.13% ((61/7,312 + 107/7,551)/2 x 100). Based on current
projections with additional resources, it is anticipated that the Board
will issue 10,500 decisions in fiscal year 2013. Thus, it is estimated
that 137 notices of appeal (and notices of election) would be filed
with the Office. Historically, one third of inter partes reexamination
proceedings have been appealed to the Board. Based on an assumption
that the appeal rate from the Board for the new proceedings will be 50%
of the historic rate, 57 additional notices of appeal will be filed
based on the new trials sought in fiscal year 2013. Based on the
percentage of small entity owned patents that were the subject of inter
partes reexamination (32.79%) and the percentage of small entity owned
patent applications or patents that were the subject of an interference
declared in fiscal year 2010 (19.62%), it is estimated that 63 small
entities will be required to file notices of appeal and notices of
elections.
The proposed rule also requires that a copy of the notice of appeal
or notice of election and complaint be provided to the Board, thus an
additional 194 (137 + 57) copies would be required.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be significant for purposes of
Executive Order 12866 (Sept. 30, 1993), as amended by Executive Order
13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007).
The Office estimates that the aggregate burden of the proposed
rules for implementing the new review procedures is approximately $80.6
million for fiscal year 2013. The USPTO considered several factors in
making this estimate.
Based on the petition and other filing requirements for initiating
a review proceeding, the USPTO initially estimated the burden of the
proposed rules on the public to be $209,131,529 in fiscal year 2013,
which represents the sum of the estimated total annual (hour)
respondent cost burden ($190,280,456) plus the estimated total annual
non-hour respondent cost burden ($18,851,073) provided in Item (O)(II)
of the Rulemaking Considerations section of this notice, infra.
However, since the Leahy-Smith America Invents Act also eliminates
inter partes reexamination practice (except for requests filed before
the effective date of September 16, 2012) and interference practice as
to applications and patents that have an effective filing date on or
after March 16, 2013, (with a few exceptions), the burden of the
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proposed rules should be offset by the eliminations of these
proceedings and their associated burdens.
It is estimated that 460 new requests for inter partes
reexamination would have been filed in FY 2012 if the Leahy-Smith
America Invents Act had not been enacted. This estimate is based on the
number of proceedings filed in fiscal years 2011 (374), 2010 (280), and
2009 (258). Elimination of 460 proceedings reduces the public's burden
to pay filing fees by $4,048,000 (460 filings with an $8,800 filing fee
due) and the public's burden to prepare requests by $21,160,000 (460
filings with $46,000 average cost to prepare). Based on the assumption
that 93% of the requests would be ordered (consistent with the fiscal
year 2011 grant rate), the burden to conduct the proceeding until close
of prosecution will reduce the public's burden by $89,880,000 (428
proceedings that would be estimated to be granted reexamination
multiplied by $210,000 which is average cost cited in the AIPLA Report
of the Economic Survey 2011 per party cost until close of prosecution
reduced by the $46,000 request preparation cost). Additionally, the
burden on the public to appeal to the Board would be reduced by
$5,358,000 (based on an estimate that 141 proceedings would be appealed
to the Board which is estimated based on the number of granted
proceedings (428) and the historical rate of appeal to the Board (1/3)
and an average public cost of $38,000). Thus, $120,446,000 in
public burden will be eliminated by the elimination of new filings of
inter partes reexamination (the sum of $4,048,000 (the filing fees),
$21,160,000 (the cost of preparing requests), $89,880,000 (the prosecution
costs), plus $5,358,000 (the burden to appeal to the Board)).
The public burden due to a reduction in the number of interferences
declared, from 64 to 51, is estimated at $9,484,400 based on the
assumption that the current percentage of interferences decided in the
preliminary phase (80%) would continue on the lower number of
proceedings instituted and based on cost to the public. To calculate
this public burden due to a reduction in the number of interferences
declared ($9,484,400), the following information was used. The average
public burden for a two party interference decided in the preliminary
phase reported in the AIPLA Report of the Economic Survey 2011 is
$644,000 (if decided in the preliminary phase) and $1,262,000 (if
decided after the preliminary phase). It is estimated that had the
Leahy-Smith America Invents Act not been enacted, 52 interferences
would have been decided in the preliminary phase, and 12 would have
been decided after the preliminary phase, equating to a public burden
of $48,632,000 ((52 multiplied by $644,000 equals $33,488,000), plus
(12 multiplied by $1,262,000 equals $15,144,000) for a total of
$48,632,000). It is estimated that 51 interferences will be instituted
in fiscal year 2013, at an average public burden of $767,600 (80% of
$644,000 plus 20% of $ 1,262,000) per interference, or a total of
$39,147,600 (51 multiplied by $767,600). Accordingly, it is estimated
that burden to the public due to the reduction of interferences would
be the total public burden for interferences of $48,632,000 minus total
public burden for estimated interferences for fiscal year 2013 of
$39,147,600, or $9,484,400.
Thus, a total of $129,930,400 in public burden will be eliminated
by the reduction in the number of interferences that would be declared
and by eliminating new filings of inter partes reexamination (this
total is a sum of the following identified above: Elimination of filing
fees ($4,048,000), cost of preparing requests ($21,160,000),
prosecution costs until close of prosecution ($89,880,000), burden to
appeal to the Board ($5,358,000) in new inter partes reexamination
proceedings, and the reduction in interference burden ($9,484,400)).
Therefore, the estimated aggregate burden of the proposed rules for
implementing the new review proceedings would be $79,201,129
($209,131,529 minus $129,930,400) in fiscal year 2013.
The USPTO expect several benefits to flow from the Leahy-Smith
America Invents Act and these proposed rules. It is anticipated that
the proposed rules will reduce the time for reviewing patents at the
USPTO. Specifically, 35 U.S.C. 316(a), as amended, and 35 U.S.C. 326(a)
provide that the Director prescribe regulations requiring a final
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determination by the Board within one year of initiation, which may be
extended for up to six months for good cause. In contrast, currently
for inter partes reexamination, the average time from the filing to the
publication of a certificate ranged from 28.9 to 41.7 months during
fiscal years 2009-2011. See Reexaminations - FY 2011,
http://www.uspto.gov/patents/Reexamination_operational_statistic_through_
FY2011Q4.pdf.
Likewise, it is anticipated that the proposed rules will minimize
duplication of efforts. In particular, the Leahy-Smith America Invents
Act provides more coordination between district court infringement
litigation and inter partes review to reduce duplication of efforts and
costs. For instance, 35 U.S.C. 315(b), as amended, will require that a
petition for inter partes review be filed within one year of the date
of service of a complaint alleging infringement of a patent. By
requiring the filing of an inter partes review petition earlier than a
request for inter partes reexamination, and by providing shorter
timelines for inter partes review compared with reexamination, it is
anticipated that the current high level of duplication between
litigation and reexamination will be reduced.
The AIPLA Report of the Economic Survey 2011 reports that the total
cost of patent litigation where the damages at risk are less than
$1,000,000 average $916,000, where the damages at risk are between
$1,000,000 and $25,000,000 average $2,769,000, and where the damages at
risk exceed $25,000,000 average $6,018,000. There may be a significant
reduction in overall burden if, as intended, the Leahy-Smith America
Invents Act and the proposed rules reduce the overlap between review at
the USPTO of issued patents and validity determination during patent
infringement actions. Data from the United States district courts
reveals that 2,830 patent cases were filed in 2006, 2,896 in 2007,
2,909 in 2008, 2,792 in 2009, and 3,301 in 2010. See U.S. Courts,
Judicial Business of the United States Courts,
www.uscourts.gov/uscourts/Statistics/JudicialBusiness/2010/appendices/
C02ASep10.pdf (last visited Nov. 11, 2011) (hosting annual reports for
1997 through 2010). Thus, the Office estimates that no more than 3,300
patent cases (the highest number of yearly filings between 2006 and 2010
rounded to the nearest 100) are likely to be filed annually. The aggregate
burden estimate above ($79,201,056) was not offset by a reduction in burden
based on improved coordination between district court patent litigation
and the new inter partes review proceedings.
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on society
consistent with obtaining the regulatory objectives; (3) selected a
regulatory approach that maximizes net benefits; (4) specified performance
objectives; (5) identified and assessed available alternatives; (6) involved
the public in an open exchange of information and perspectives among experts
in relevant disciplines, affected stakeholders in the private sector, and
the public as a whole, and provided online access to the rule making docket;
(7) attempted to promote coordination, simplification, and harmonization
across government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
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impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking meets
applicable standards to minimize litigation, eliminate ambiguity, and
reduce burden as set forth in sections 3(a) and 3(b)(2) of Executive Order
12988 (Feb. 5, 1996). This rulemaking carries out a statute designed to
lessen litigation. See H.R. Rep. No. 112-98, at 45-48.
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not effect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801-808), prior to issuing any final rule, the United
States Patent and Trademark Office will submit a report containing the
final rule and other required information to the U.S. Senate, the U.S.
House of Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this notice are not expected to
result in an annual effect on the economy of 100 million dollars or
more, a major increase in costs or prices, or significant adverse
effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign based enterprises in domestic and export markets.
Therefore, this notice is not expected to result in a "major rule" as
defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes proposed in
this notice do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501-1571.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321-4370h.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501-3549) requires that the USPTO consider the impact of
paperwork and other information collection burdens imposed on the
public. This proposed rulemaking involves information collection
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requirements which are subject to review by the Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C.
3501-3549). The collection of information involved in this notice has
been submitted to OMB under OMB control number 0651-00xx. The proposed
collection will be available at the OMB's Information Collection Review
Web site at: www.reginfo.gov/public/do/PRAMain.
The USPTO is submitting the information collection to OMB for its
review and approval because this notice of proposed rulemaking will add
the following to a collection of information:
(1) Petitions to institute an inter partes review (§§ 42.5,
42.6, 42.8, 42.11, 42.13, 42.20, 42.21, 42.22, 42.24(a)(1), 42.63,
42.65, and 42.101 through 42.105);
(2) Petitions to institute a post-grant review (§§ 42.5,
42.6, 42.8, 42.11, 42.13, 42.20, 42.21, 42.22, 42.24(a)(2), 42.63,
42.65, and 42.201 through 42.205);
(3) Petitions to institute a covered business method patent review
(§§ 42.5, 42.6, 42.8, 42.11, 42.13, 42.20, 42.21, 42.22,
42.24(a)(3), 42.63, 42.65, 42.203, 42.205, and 42.302 through 42.304);
(4) Petitions to institute a derivation proceeding (§§ 42.5,
42.6, 42.8, 42.11, 42.13, 42.20, 42.21, 42.22, 42.24(a)(4),42.63,
42.65, and 42.402 through 42.406);
(5) Motions (§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.22,
42.24(a)(5), 42.51, through 42.54, 42.63, 42.64, 42.65, 42.121, 42.221,
42.123, and 42.223);
(6) Oppositions (§§ 42.6, 42.8, 42.11, 42.13, 42.21, 42.23,
42.24(b), 42.51, 42.52, 42.53, 42.54, 42.63, 42.64, 42.65, 42.107,
42.120, 42.207, and 42.220);
(7) Replies provided for in 35 U.S.C. 135 and 311-318, as amended,
and new 35 U.S.C. 319 and 321-329 (§§ 42.6, 42.8, 42.11, 42.13,
42.21, 42.23, 42.24(c), 42.51, 42.52, 42.53, 42.54, 42.63, and 42.65);
and
(8) Notices of judicial review of a Board decision, including
notices of appeal and notices of election provided for 35 U.S.C. 141,
142, 145 and 146 (§§ 90.1 through 90.3).
The proposed rules also permit filing requests for oral argument
(§ 42.70) provided for in 35 U.S.C. 316(a)(10), as amended, and 35
U.S.C. 326(a)(10), requests for rehearing (§ 42.71(c)), requests
for adverse judgment (§ 42.73(b)), requests that a settlement be
treated as business confidential (§ 42.74(b) and 42.409) provided
for in 35 U.S.C. 317, as amended, and 35 U.S.C. 327, and arbitration
agreements and awards (§ 42.410) to a collection of information.
I. Abstract: The USPTO is required by 35 U.S.C. 131 and 151 to
examine applications and, when appropriate, issue applications as
patents.
Chapter 31 of title 35, United States Code, in effect on September
16, 2012, provides for inter partes review proceedings allowing third
parties to petition the USPTO to review the patentability of an issued
patent under 35 U.S.C. 102 and 103 based on patents and printed
publications. If a trial is initiated by the USPTO based on the
petition, as authorized by the USPTO, additional motions may be filed
by the petitioner. A patent owner may file a response to the petition
and if a trial is instituted, as authorized by the USPTO, may file
additional motions.
Chapter 32 of title 35 U.S.C. in effect on September 16, 2012,
provides for post-grant review proceeding allowing third parties to
petition the USPTO to review the patentability of an issued patent
under any ground authorized under 35 U.S.C. 282(b)(2). If a trial is
initiated by the USPTO based on the petition, as authorized by the
USPTO, additional motions may be filed by the petitioner. A patent
owner may file a response to the petition and if a trial is instituted,
as authorized by the USPTO, may file additional motions.
Section 18 of the Leahy-Smith America Invents Act provides for a
transitional program for covered business method patents, which will
employ the standards and procedures of the post-grant review proceeding
with a few exceptions. 35 U.S.C. 135 in effect on March 16, 2013,
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provides for petitions to institute a derivation proceeding at the
USPTO for certain applications. The new rules for initiating and
conducting these proceedings are proposed in this notice as new part 42
of title 37 of the Code of Federal Regulations.
In estimating the number of hours necessary for preparing a petition
to institute an inter partes review, the USPTO considered the estimated
cost of preparing a request for inter partes reexamination ($46,000),
the median billing rate ($340/hour), and the observation that the cost of
inter partes reexamination has risen the fastest of all litigation costs
since 2009 in the AIPLA Report of the Economic Survey 2011. It was estimated
that a petition for an inter partes review and an inter partes reexamination
request would cost the same to the preparing party ($46,000). Since
additional grounds are provided in post-grant review or covered
business method patent review, the Office estimates the cost of
preparing a petition to institute a review will be 33.333% more than
the estimated cost of preparing a request for inter partes
reexamination, or $61,333.
In estimating the number of hours necessary for preparing motions
after instituting and participating in the review, the USPTO considered
in the AIPLA Report of the Economic Survey 2011 which reported the
average cost of a party to a two-party interference to the end of the
preliminary motion phase ($322,000) and inclusive of all costs
($631,000). The Office considered that the preliminary motion phase is
a good proxy for patentability reviews since that is the period of
current contested cases before the trial section of the Board where
most patentability motions are currently filed.
The USPTO also reviewed recent contested cases before the trial
section of the Board to make estimates on the average number of motions
for any matter including priority, the subset of those motions directed
to non-priority issues, the subset of those motions directed to non-
priority patentability issues, and the subset of those motions directed
to patentability issues based on a patent or printed publication on the
basis of 35 U.S.C. 102 or 103. The review of current contested cases
before the trial section of the Board indicated that approximately 15%
of motions were directed to prior art grounds, 18% of motions were
directed to other patentability grounds, 27% were directed to
miscellaneous issues, and 40% were directed to priority issues. It was
estimated that the cost per motion to a party in current contested
cases before the trial section of the Board declines because of overlap
in subject matter, expert overlap, and familiarity with the technical
subject matter. Given the overlap of subject matter, a proceeding with
fewer motions will have a somewhat less than proportional decrease in
costs since the overlapping costs will be spread over fewer motions.
It is estimated that the cost of an inter partes review would be
60% of the cost of current contested cases before the trial section of
the Board to the end of the preliminary motion period. An inter partes
review should have many fewer motions since only one party will have a
patent that is the subject of the proceeding (compared with each party
having at least a patent or an application in current contested cases
before the trial section of the Board). Moreover, fewer issues can be
raised since inter partes review will not have priority-related issues
that must be addressed in current contested cases before the trial
section of the Board. Consequently, a 60% weighting factor should
capture the typical costs of an inter partes review.
It is estimated that the cost of a post-grant review or covered
business method patent review would be 75% of the cost of current
contested cases before the trial section of the Board to the end of the
preliminary motion period. The basis for this estimate is similar to
the basis for the inter partes review estimate. Since more
patentability issues may be raised in the petition, the cost for these
trials is expected to be somewhat higher. Again, a 75% weighting factor
should capture the typical costs of a post-grant review or a covered
business method patent review.
Derivations will be more like current contested cases before the
trial section of the Board inasmuch as they may have a period which
sets the stage for determining derivation and a derivation period. One
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half of derivations are anticipated to end in the preliminary motion
period, while the other half are anticipated to proceed to decision on
derivation. While it is recognized that fewer than half of all current
contested cases before the trial section of the Board proceed to a
priority decision, derivation contests are often more protracted than
other current contested cases before the trial section of the Board.
The costs associated with derivations through the preliminary motion
period and through the derivation period should be comparable to the
corresponding costs of current contested cases before the trial section
of the Board.
The title, description, and respondent description of the
information collection are shown below with an estimate of the annual
reporting burdens. Included in this estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information. The principal impact of
the proposed changes in this notice of proposed rulemaking is to
implement the changes to Office practice necessitated by §§
3(i), 6, and 18 of the Leahy-Smith America Invents Act.
The public uses this information collection to request review and
derivation proceedings and to ensure that the associated fees and
documentation are submitted to the USPTO.
II. Data
Needs and Uses: The information supplied to the USPTO by a petition
to institute a review or derivation as well as the motions authorized
following the institution is used by the USPTO to determine whether to
initiate a review under 35 U.S.C. 314, as amended, or 35 U.S.C. 324 or
derivation proceeding under 35 U.S.C. 135, as amended, and to prepare a
final decision under 35 U.S.C. 135 or 318, as amended, or 35 U.S.C.
328.
OMB Number: 0651-00xx.
Title: Patent Review and Derivation Proceedings.
Form Numbers: None.
Type of Review: New Collection.
Likely Respondents/Affected Public: Individuals or households,
businesses or other for profit, not-for-profit institutions, farms,
Federal Government, and state, local, or tribal governments.
Estimated Number of Respondents/Frequency of Collection: 1120
respondents and 4,967 responses per year.
Estimated Time per Response: The USPTO estimates that it will take
the public from 0.1 to 180.4 hours to gather the necessary information,
prepare the documents, and submit the information to the USPTO.
Estimated Total Annual Respondent Burden Hours: 559,648.4 hours per
year.
Estimated Total Annual (Hour) Respondent Cost Burden: $190,280,456
per year. The USPTO expects that the information in this collection
will be prepared by attorneys. Using the professional rate of $340 per
hour for attorneys in private firms, the USPTO estimates that the
respondent cost burden for this collection will be approximately
$190,280,456 per year (559,648.4 hours per year multiplied by $340 per
hour).
Estimated Total Annual Non-Hour Respondent Cost Burden: $18,851,073
per year. There are no capital start-up or maintenance costs associated
with this information collection. However, this collection does have
annual (non-hour) costs in the form of filing fees and postage costs
where filing via mail is authorized. It is estimated that filing via
mail will be authorized in one inter partes review petition filing and
3 subsequent papers. There are filing fees associated with petitions
for inter partes review, post-grant review, and covered business method
patent review and for requests to treat a settlement as business
confidential. The total filing fees for this collection are calculated
in the accompanying table. The USPTO estimates that filings authorized
to be filed via mail will be mailed to the USPTO by Express Mail using the
U.S. Postal Service's flat rate envelope, which can accommodate varying
submission weights, estimated in this case to be 16 ounces for the
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petitions and two ounces for the other papers. The cost of the flat
rate envelope is $18.30. The USPTO estimates that the total postage
cost associated with this collection will be approximately $73 per
year. The USPTO estimates that the total fees associated with this
collection will be approximately $18,851,073 per year.
Therefore, the total cost burden in fiscal year 2013 is estimated
to be $209,131,529 (the sum of the estimated total annual (hour)
respondent cost burden ($190,280,456) plus the estimated total annual
non-hour respondent cost burden ($18,851,073)).
Estimated time Estimated Estimated
for response annual annual burden
Item (in hours) responses hours
Petition for inter partes 135.3 460 62,238
review
Petition for post-grant 180.4 50 9,020
review or covered
business method
patent review
Petition for derivation 180.4 50 9,020
Reply to initial inter partes 100 406 40,600
review petition
Reply to initial post-grant 100 45 4,500
review or covered business
method patent review
Request for Reconsideration 80 146 11,680
Motions, replies and 140 2,453 343,420
oppositions after
institution in inter
partes review
Motions, replies and
oppositions after
institution in post- 130 342 44,460
grant review or covered
business method patent
review
Motions, replies and 120 210 25,200
oppositions in derivation
proceeding
Request for oral hearing 20 466 9,320
Request to treat a settlement 2 20 40
as business confidential
Request for adverse judgment, 1 103 103
default adverse judgment
or settlement
Arbitration agreement 4 2 8
and award
Request to make a settlement 1 20 20
agreement available
Notice of judicial review of 0.1 hour 194 19.4
a Board decision (e.g.,
notice of appeal under
35 U.S.C. 142)
Totals 4,967 559,648.4
Estimated Estimated
annual annual filing
Item responses Fee amount costs
Petition for inter partes 460 $35,800 $16,468,000
review
Petition for post-grant 50 47,100 2,355,000
review or covered
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business method patent
review
Petition for derivation 50 400 20,000
Reply to inter partes 406 0 0
review petition
Reply to post-grant review 45 0 0
or covered business
method patent
review petition
Request for Reconsideration 146 0 0
Motions, replies and
oppositions after
initiation in inter 2,453 0 0
partes review
Motions, replies and 342 0 0
oppositions after
initiation in
post-grant review or
covered business method
patent review
Motions, replies and 210 0 0
oppositions in derivation
proceeding
Request for oral hearing 466 0 0
Request to treat a 20 0 0
settlement as business
confidential
Request for adverse judgment, 103 0 0
default adverse judgment
or settlement
Arbitration agreement 2 0 0
and awards
Request to make a settlement 20 400 8,000
agreement available
Notice of judicial review of 194 0 0
a Board decision (e.g.,
notice of appeal under
35 U.S.C. 142)
Totals 4,967 18,851,000
III. Solicitation
The agency is soliciting comments to: (1) Evaluate whether the
proposed information requirement is necessary for the proper
performance of the functions of the agency, including whether the
information will have practical utility; (2) evaluate the accuracy of
the agency's estimate of the burden; (3) enhance the quality, utility,
and clarity of the information to be collected; and (4) minimize the
burden of collecting the information on those who are to respond,
including by using appropriate automated, electronic, mechanical, or
other technological collection techniques or other forms of information
technology.
Interested persons are requested to send comments regarding this
information collection by April 9, 2012, to: (1) The Office of
Information and Regulatory Affairs, Office of Management and Budget,
New Executive Office Building, Room 10202, 725 17th Street NW.,
Washington, DC 20503, Attention: Nicholas A. Fraser, the Desk Officer
for the United States Patent and Trademark Office, and via email at
nfraser@omb.eop.gov; and (2) The Board of Patent Appeals and
Interferences by electronic mail message over the Internet addressed to
patent_trial_rules@uspto.gov, or by mail addressed to: Mail Stop
Patent Board, Director of the United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of "Lead Judge Michael Tierney, Patent Trial Proposed Rules."
Notwithstanding any other provision of law, no person is required to
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respond to nor shall a person be subject to a penalty for failure to comply
with a collection of information subject to the requirements of the
Paperwork Reduction Act unless that collection of information displays a
currently valid OMB control number.
List of Subjects
37 CFR Part 42
Administrative practice and procedure, Inventions and patents,
Lawyers.
37 CFR Part 90
Administrative practice and procedure, Inventions and patents,
Lawyers.
Proposed Amendments to the Regulatory Text
For the reasons stated in the preamble, the Under Secretary of
Commerce for Intellectual Property and Director of the United States
Patent and Trademark Office proposes to amend 37 CFR chapter I as
follows:
1. Add part 42 to read as follows:
PART 42 - TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
§
Subpart A - Trial Practice and Procedure
General
42.1 Policy.
42.2 Definitions.
42.3 Jurisdiction.
42.4 Notice of trial.
42.5 Conduct of the proceeding.
42.6 Filing of documents, including exhibits; service.
42.7 Management of the record.
42.8 Mandatory notices.
42.9 Action by patent owner.
42.10 Counsel.
42.11 Duty of candor.
42.12 Sanctions.
42.13 Citation of authority.
42.14 Public availability.
Fees
42.15 Fees.
Petition and Motion Practice
42.20 Generally.
42.21 Notice of basis for relief.
42.22 Content of petitions and motions.
42.23 Oppositions and replies.
42.24 Page limits for petitions, motions, oppositions and replies.
42.25 Default filing times.
Testimony and Production
42.51 Discovery.
42.52 Compelling testimony and production.
42.53 Taking testimony.
42.54 Protective order.
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42.55 Confidential information in a petition.
42.56 Expungement of confidential information.
42.61 Admissibility.
42.62 Applicability of the Federal Rules of Evidence.
42.63 Form of evidence.
42.64 Objection; motion to exclude; motion in limine.
42.65 Expert testimony; tests and data.
Oral Argument, Decision, and Settlement
42.70 Oral argument.
42.71 Decision on petitions or motions.
42.72 Termination of trial.
42.73 Judgment.
42.74 Settlement.
Certificate
42.80 Certificate.
Subpart B - [Reserved]
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312,
316, 321-326 and Leahy-Smith America Invents Act, Pub. L. 112-29,
sections 6(c), 6(f) and 18, 125 Stat. 284, 304, 311, and 329 (2011).
Subpart A - Trial Practice and Procedure
General
§ 42.1 Policy.
(a) Scope. Part 42 governs proceedings before the Patent Trial and
Appeal Board. Sections 1.4, 1.7, 1.14, 1.16, 1.22, 1.23, 1.25, 1.26,
1.32, 1.34, and 1.36 of this chapter also apply to proceedings before
the Board, as do other sections of part 1 of this chapter that are
incorporated by reference into this part.
(b) Construction. This part shall be construed to secure the just,
speedy, and inexpensive resolution of every proceeding.
(c) Decorum. Every party must act with courtesy and decorum in all
proceedings before the Board, including in interactions with other
parties.
(d) Evidentiary standard. The default evidentiary standard is a
preponderance of the evidence.
§ 42.2 Definitions.
The following definitions apply to this part:
Affidavit means affidavit or declaration under § 1.68 of this
chapter. A transcript of an ex parte deposition or a declaration under
28 U.S.C. 1746 may be used as an affidavit.
Board means the Patent Trial and Appeal Board. Board means a panel
of the Board or a member or employee acting with the authority of the
Board.
Business day means a day other than a Saturday, Sunday, or Federal
holiday within the District of Columbia.
Confidential information means trade secret or other confidential
research, development or commercial information.
Final means final for the purpose of judicial review. A decision is
final only if it disposes of all necessary issues with regard to the
party seeking judicial review, and does not indicate that further
action is required.
Hearing means consideration of the trial.
Involved means an application, patent, or claim that is the subject
of the proceeding.
Judgment means a final written decision by the Board.
Motion means a request for relief other than by petition.
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Office means the United States Patent and Trademark Office.
Panel means at least three members of the Board.
Party means at least the petitioner and the patent owner and, in a
derivation proceeding, any applicant.
Petition is a request that a trial be instituted.
Petitioner means the party filing a petition requesting that a
trial be instituted.
Preliminary Proceeding begins with the filing of a petition for
instituting a trial and ends with a written decision as to whether a
trial will be instituted.
Proceeding means a trial or preliminary proceeding.
Rehearing means reconsideration.
Trial means a contested case instituted by the Board based upon a
petition. A trial begins with a written decision notifying the
petitioner and patent owner of the institution of the trial. The term
trial specifically includes a derivation proceeding under 35 U.S.C.
135; an inter partes review under Chapter 31 of title 35, United States
Code; a post-grant review under Chapter 32 of title 35, United States
Code; and a transitional business-method review under section 18 of the
Leahy-Smith America Invents Act. Patent interferences are administered
under part 41 and not under part 42 of this title, and therefore are
not trials.
§ 42.3 Jurisdiction.
(a) The Board may exercise exclusive jurisdiction within the Office
over every involved application and patent during the proceeding, as
the Board may order.
(b) A petition to institute a trial must be filed with the Board in
a timely manner.
§ 42.4 Notice of trial.
(a) Institution of trial. The Board institutes the trial on behalf
of the Director.
(b) Notice of a trial will be sent to every party to the
proceeding. The entry of the notice institutes the trial.
(c) The Board may authorize additional modes of notice, including:
(1) Sending notice to another address associated with the party, or
(2) Publishing the notice in the Official Gazette of the United
States Patent and Trademark Office or the Federal Register.
§ 42.5 Conduct of the proceeding.
(a) The Board may determine a proper course of conduct in a
proceeding for any situation not specifically covered by this part and
may enter non-final orders to administer the proceeding.
(b) The Board may waive or suspend a requirement of parts 1, 41,
and 42 and may place conditions on the waiver or suspension.
(c) Times - (1) Setting times. The Board may set times by order.
Times set by rule are default and may be modified by order. Any
modification of times will take any applicable statutory pendency goal
into account.
(2) Extension of time. A request for an extension of time must be
supported by a showing of good cause.
(3) Late action. A late action will be excused on a showing of good
cause or upon a Board decision that consideration on the merits would
be in the interests of justice.
(d) Ex parte communications. Communication regarding a specific
proceeding with a Board member defined in 35 U.S.C. 6(a) is not
permitted unless both parties have an opportunity to be involved in the
communication.
§ 42.6 Filing of documents, including exhibits; service.
(a) General format requirements. (1) Page size must be 8 1/2 inch
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x 11 inch except in the case of exhibits that require a larger size in
order to preserve details of the original.
(2) In documents, including affidavits, created for the proceeding:
(i) Markings must be in black or must otherwise provide an
equivalent dark, high-contrast image;
(ii) Either a proportional or monospaced font may be used:
(A) The proportional font must be 14-point or larger, and
(B) The monospaced font must not contain more than 4 characters per
centimeter (10 characters per inch);
(iii) Double spacing must be used except in headings, tables of
contents, tables of authorities, indices, signature blocks, and
certificates of service. Block quotations may be 1.5 spaced, but must
be indented from both the left and the right margins; and
(iv) Margins must be at least 2.5 centimeters (1 inch) on all
sides.
(3) Incorporation by reference; combined documents. Arguments must
not be incorporated by reference from one document into another
document. Combined motions, oppositions, replies, or other combined
documents are not permitted.
(4) Signature; identification. Documents must be signed in
accordance with §§ 1.33 and 11.18(a) of this title, and should
be identified by the trial number (where known).
(b) Modes of filing - (1) Electronic filing. Unless otherwise
authorized, submissions are to be made to the Board electronically via
the Internet according to the parameters established by the Board and
published on the Web site of the Office.
(2)(i) Filing by means other than electronic filing. A document
filed by means other than electronic filing must:
(A) Be accompanied by a motion requesting acceptance of the
submission; and
(B) Identify a date of transmission where a party seeks a filing
date other than the date of receipt at the Board.
(ii) Mailed correspondence shall be sent to: Mail Stop PATENT
BOARD, Patent Trial and Appeal Board, United States Patent and
Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(c) Exhibits. Each exhibit must be filed with the first document in
which it is cited except as the Board may otherwise order.
(d) Previously filed paper. A document already in the record of the
proceeding must not be filed again, not even as an exhibit or an
appendix, without express Board authorization.
(e) Service - (1) Simultaneous with filing. Each document filed with
the Board, if not previously served, must be served simultaneously on
each opposing party.
(2) Counsel of record. If a party is represented by counsel of
record in the proceeding, service must be on counsel.
(3) Certificate of service. (i) Each document, other than an
exhibit, must include a certificate of service at the end of that
document. Any exhibit filed with the document may be included in the
certification for the document.
(ii) For an exhibit filed separately, a transmittal letter
incorporating the certificate of service must be filed. If more than
one exhibit is filed at one time, a single letter should be used for
all of the exhibits filed together. The letter must state the name and
exhibit number for every exhibit filed with the letter.
(iii) The certificate of service must state:
(A) The date and manner of service; and
(B) The name and address of every person served.
§ 42.7 Management of the record.
(a) The Board may expunge any paper directed to a proceeding or
filed while an application or patent is under the jurisdiction of the
Board that is not authorized under this part or in a Board order or
that is filed contrary to a Board order.
(b) The Board may vacate or hold in abeyance any non-Board action
directed to a proceeding while an application or patent is under the
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jurisdiction of the Board unless the action was authorized by the
Board.
§ 42.8 Mandatory notices.
(a) Each notice listed in paragraph (b) of this section must be
filed with the Board:
(1) By the petitioner, as part of the petition;
(2) By the patent owner, or applicant in the case of derivation,
within 21 days of service of the petition; or
(3) By either party, within 21 days of a change of the information
listed in paragraph (b) of this section stated in an earlier paper.
(b) Each of the following notices must be filed as a separate paper
with a caption identical to the title of the paragraph:
(1) Real party-in-interest. Identify each real party-in-interest
for the party.
(2) Related matters. Identify any other judicial or administrative
matter that would affect, or be affected by, a decision in the
proceeding.
(3) Lead and back-up counsel. If the party is represented by
counsel, then counsel must be identified.
(4) Service information. Identify (if applicable):
(i) An electronic mail address;
(ii) A postal mailing address;
(iii) A hand-delivery address, if different than the postal mailing
address;
(iv) A telephone number; and
(v) A facsimile number.
§ 42.9 Action by patent owner.
(a) Entire interest. An owner of the entire interest in an involved
application or patent may act to the exclusion of the inventor (see
§ 3.73(b) of this title).
(b) Part interest. An owner of a part interest in the subject
patent may move to act to the exclusion of an inventor or a co-owner.
The motion must show the inability or refusal of an inventor or co-
owner to prosecute the proceeding or other cause why it is in the
interests of justice to permit the owner of a part interest to act in
the trial. In granting the motion, the Board may set conditions on the
actions of the parties.
§ 42.10 Counsel.
(a) If a party is represented by counsel, the party should
designate a lead counsel and a back-up counsel who can conduct business
on behalf of the lead counsel.
(b) A power of attorney must be filed with the designation of
counsel, except the patent owner should not file an additional power of
attorney if the designated counsel is already counsel of record in the
subject patent or application.
(c) The Board may recognize counsel pro hac vice during a
proceeding upon a showing of good cause, subject to such conditions as
the Board may impose.
(d) A panel of the Board may disqualify counsel for cause after
notice and opportunity for hearing. A decision to disqualify is not
final for the purposes of judicial review until certified by the Chief
Administrative Patent Judge.
(e) Counsel may not withdraw from a proceeding before the Board
unless the Board authorizes such withdrawal.
§ 42.11 Duty of candor.
Parties and individuals associated with the parties have a duty of
candor and good faith to the Office during the course of a proceeding.
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§ 42.12 Sanctions.
(a) The Board may impose a sanction against a party for misconduct,
including:
(1) Failure to comply with an applicable rule or order in the
proceeding;
(2) Advancing a misleading or frivolous argument or request for
relief;
(3) Misrepresentation of a fact;
(4) Engaging in dilatory tactics;
(5) Abuse of discovery;
(6) Abuse of process; or
(7) Any other improper use of the proceeding, including actions
that harass or cause unnecessary delay or an unnecessary increase in
the cost of the proceeding.
(b) Sanctions include entry of:
(1) An order holding facts to have been established in the
proceeding;
(2) An order expunging, or precluding a party from filing a paper;
(3) An order precluding a party from presenting or contesting a
particular issue;
(4) An order precluding a party from requesting, obtaining, or
opposing discovery;
(5) An order excluding evidence;
(6) An order providing for compensatory expenses, including
attorney fees;
(7) An order requiring terminal disclaimer of patent term; or
(8) Judgment in the trial or dismissal of the petition.
§ 42.13 Citation of authority.
(a) For any United States Supreme Court decision, citation must be
to the United States Reports.
(b) For any decision other than a United States Supreme Court
decision, citation must be to the West Reporter System.
(c) Citations to authority must include pinpoint citations whenever
a specific holding or portion of an authority is invoked.
(d) Non-binding authority should be used sparingly. If the
authority is not an authority of the Office and is not reproduced in
the United States Reports or the West Reporter System, a copy of the
authority should be provided.
§ 42.14 Public availability.
The record of a proceeding, including documents and things, shall
be made available to the public, except as otherwise ordered. A party
intending a document or thing to be sealed shall file a motion to seal
concurrent with the filing of the document or thing to be sealed. The
document or thing shall be provisionally sealed on receipt of the
motion and remain so pending the outcome of the decision on the motion.
Fees
§ 42.15 Fees.
(a) On filing a petition for inter partes review of a patent,
payment of the following fee is due based upon the number of challenged
claims:
(1) 1 to 20 claims - $27,200.00.
(2) 21 to 30 claims - $34,000.00.
(3) 31 to 40 claims - $40,800.00.
(4) 41 to 50 claims - $54,400.00.
(5) 51 to 60 claims - $68,000.00.
(6) Additional fee for each additional 10 claims or portion
thereof - $27,200.00.
(b) On filing a petition for post-grant review or covered business
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method patent review of a patent, payment of the following fee is due
based upon the number of challenged claims:
(1) 1 to 20 claims - $35,800.00.
(2) 21 to 30 claims - $44,750.00.
(3) 31 to 40 claims - $53,700.00.
(4) 41 to 50 claims - $71,600.00.
(5) 51 to 60 claims - $89,500.00.
(6) Additional fee for each additional 10 claims or portion
thereof - $35,800.00.
(c) On the filing of a petition for a derivation proceeding a
fee of: - $400.00.
(d) Any request requiring payment of a fee under this part,
including a written request to make a settlement agreement
available: - $400.00.
Petition and Motion Practice
§ 42.20 Generally.
(a) Relief. Relief, other than a petition requesting the
institution of a trial, must be requested in the form of a motion.
(b) Prior authorization. A motion will not be entered without Board
authorization. Authorization may be provided in an order of general
applicability or during the proceeding.
(c) Burden of proof. The moving party has the burden of proof to
establish that it is entitled to the requested relief.
(d) Briefing. The Board may order briefing on any issue involved in
the trial.
§ 42.21 Notice of basis for relief.
(a) Notice of request for relief. The Board may require a party to
file a notice stating the relief it requests and the basis for its
entitlement to relief. A notice must include sufficient detail to place
the Board and each opponent on notice of the precise relief requested.
A notice is not evidence except as an admission by a party-opponent.
(b) Filing and service. The Board may set the times and conditions
for filing and serving notices required under this section. The Board
may provide for the notice filed with the Board to be maintained in
confidence for a limited time.
(c) Effect. If a notice under paragraph (a) of this section is
required:
(1) A failure to state a sufficient basis for relief may result in
a denial of the relief requested;
(2) A party will be limited to filing motions consistent with the
notice; and
(3) Ambiguities in the notice will be construed against the party.
(d) Correction. A party may move to correct its notice. The motion
should be filed promptly after the party becomes aware of the basis for
the correction. A correction filed after the time set for filing
notices will only be entered if entry would serve the interests of
justice.
§ 42.22 Content of petitions and motions.
(a) Each petition or motion must be filed as a separate paper and
must include:
(1) A statement of the precise relief requested;
(2) A statement of material facts (see paragraph (c) of this
section); and
(3) A full statement of the reasons for the relief requested,
including a detailed explanation of the significance of the evidence
including material facts, and the governing law, rules, and precedent.
(b) Relief requested. Where a rule in part 1 of this title
ordinarily governs the relief sought, the petition or motion must make
any showings required under that rule in addition to any showings
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required in this part.
(c) Statement of material facts. Each material fact shall be set
forth as a separately numbered sentence with specific citations to the
portions of the record that support the fact.
(d) The Board may order additional showings or explanations as a
condition for authorizing a motion (see § 42.20(b)).
§ 42.23 Oppositions and replies.
(a) Oppositions and replies must comply with the content
requirements for motions and must include a statement identifying
material facts in dispute. Any material fact not specifically denied
may be considered admitted.
(b) All arguments for the relief requested in a motion must be made
in the motion. A reply may only respond to arguments raised in the
corresponding opposition.
§ 42.24 Page limits for petitions, motions, oppositions, and
replies.
(a) Petitions and motions. (1) The following page limits for
petitions and motions apply and include the required statement of facts
in support of the petition or motion. The page limit does not include a
table of contents, a table of authorities, a certificate of service, or
appendix of exhibits.
(i) Petition requesting inter partes review: 50 pages
(ii) Petition requesting post-grant review: 70 pages
(iii) Petition requesting covered business method patent review: 70
pages
(iv) Petition requesting derivation proceeding: 50 pages
(v) Motions: 15 pages.
(2) Petitions to institute a trial must comply with the stated page
limits but may be accompanied by a motion to waive the page limits. The
petitioner must show in the motion how a waiver of the page limits is
in the interests of justice and must append a copy of proposed petition
exceeding the page limit to the motion. If the motion is not granted,
the proposed petition exceeding the page limit may be expunged or
returned. Any other motion to waive page limits must be granted in
advance of filing a motion, opposition or reply for which the waiver is
necessary.
(b) Oppositions. The page limits for oppositions are the same as
those for corresponding petitions or motions. The page limits do not
include a listing of facts which are admitted, denied, or cannot be
admitted or denied.
(c) Replies. The following page limits for replies apply and
include the required statement of facts in support of the reply. The
page limits do not include a table of contents, a table of authorities,
a listing of facts which are admitted, denied, or cannot be admitted or
denied, a certificate of service, or appendix of exhibits.
(1) Replies to patent owner responses to petitions: 15 pages
(2) Replies to motions: 5 pages.
§ 42.25 Default filing times.
(a) A motion may only be filed according to a schedule set by the
Board. The default times for acting are:
(1) An opposition is due one month after service of the motion; and
(2) A reply is due one month after service of the opposition.
(b) A party should seek relief promptly after the need for relief
is identified. Delay in seeking relief may justify a denial of relief
sought.
Testimony and Production
§ 42.51 Discovery.
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(a) Limited discovery. A party is not entitled to discovery except
as authorized in this subpart. The parties may agree to discovery
between themselves at any time.
(b) Routine discovery. Except as the Board may otherwise order:
(1) Unless previously served, any exhibit cited in a paper or in
testimony must be served with the citing paper or testimony.
(2) Cross examination of affidavit testimony is authorized within
such time period as the Board may set.
(3) Unless previously served, noncumulative information that is
inconsistent with a position advanced by the patent owner or petitioner
during the proceeding. The information is to be filed as soon as
practicable in a motion identifying supplemental information or as part
of a petition, motion, opposition, reply, preliminary patent owner
response to petition, or patent owner response to petition. The party
submitting the information must specify the relevance of the
information, including where the information is presented in a document
and, where applicable, how the information is pertinent to the claims.
(c) Additional discovery. (1) A party may move for additional
discovery. Except in post-grant reviews, the moving party must show
that such additional discovery is in the interests of justice. The
Board may specify conditions for such additional discovery.
(2) When appropriate, a party may obtain production of documents
and things during cross examination of an opponent's witness or during
authorized compelled testimony under § 42.52.
§ 42.52 Compelling testimony and production.
(a) Authorization required. A party seeking to compel testimony or
production of documents or things must file a motion for authorization.
The motion must describe the general relevance of the testimony,
document, or thing, and must:
(1) In the case of testimony, identify the witness by name or
title; and
(2) In the case of a document or thing, the general nature of the
document or thing.
(b) Outside the United States. For testimony or production sought
outside the United States, the motion must also:
(1) In the case of testimony. (i) Identify the foreign country and
explain why the party believes the witness can be compelled to testify
in the foreign country, including a description of the procedures that
will be used to compel the testimony in the foreign country and an
estimate of the time it is expected to take to obtain the testimony;
and
(ii) Demonstrate that the party has made reasonable efforts to
secure the agreement of the witness to testify in the United States but
has been unsuccessful in obtaining the agreement, even though the party
has offered to pay the travel expenses of the witness to testify in the
United States.
(2) In the case of production of a document or thing. (i) Identify
the foreign country and explain why the party believes production of
the document or thing can be compelled in the foreign country,
including a description of the procedures that will be used to compel
production of the document or thing in the foreign country and an
estimate of the time it is expected to take to obtain production of the
document or thing; and
(ii) Demonstrate that the party has made reasonable efforts to
obtain the agreement of the individual or entity having possession,
custody, or control of the document or thing to produce the document or
thing in the United States but has been unsuccessful in obtaining that
agreement, even though the party has offered to pay the expenses of
producing the document or thing in the United States.
§ 42.53 Taking testimony.
(a) Form. Uncompelled direct testimony must be submitted in the form
of an affidavit. All other testimony, including testimony compelled under
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35 U.S.C. 24, must be in the form of a deposition transcript. In addition,
the Board may authorize or require live or video-recorded testimony.
(b) Time and location. (1) Uncompelled direct testimony may be
taken at any time to support a petition, motion, opposition, or reply;
otherwise, testimony may only be taken during a testimony period set by
the Board.
(2) Except as the Board otherwise orders, during the testimony
period, deposition testimony may be taken at any reasonable time and
location within the United States before any disinterested official
authorized to administer oaths at that location.
(3) Deposition testimony outside the United States may only be
taken as the Board specifically directs.
(c) Notice of deposition. (1) Prior to the taking of deposition
testimony, all parties to the proceeding must agree on the time and
place for taking testimony. If the parties cannot agree, the party
seeking the testimony must initiate a conference with the Board to set
a time and place.
(2) Cross-examination should ordinarily take place after any
supplemental evidence relating to the direct testimony has been filed
and more than a week before the filing date for any paper in which the
cross-examination testimony is expected to be used. A party requesting
cross-examination testimony of more than one witness may choose the
order in which the witnesses are to be cross-examined.
(3) In the case of direct deposition testimony, at least 3 business
days prior to the conference in paragraph (c)(1) of this section, the
party seeking the direct testimony must serve:
(i) A list and copy of each document under the party's control and
on which the party intends to rely; and
(ii) A list of, and proffer of reasonable access to, anything other
than a document under the party's control and on which the party
intends to rely.
(4) The party seeking the deposition must file a notice of the
deposition at least 2 business days before a deposition.
(5) Scope and content - (i) For direct deposition testimony, the
notice limits the scope of the testimony and must list:
(A) The time and place of the deposition;
(B) The name and address of the witness;
(C) A list of the exhibits to be relied upon during the deposition;
and
(D) A general description of the scope and nature of the testimony
to be elicited.
(ii) For cross-examination testimony, the scope of the examination
is limited to the scope of the direct testimony.
(iii) The notice must list the time and place of the deposition.
(6) Motion to quash - Objection to a defect in the notice is waived
unless the objecting party promptly seeks authorization to file a
motion to quash.
(d) Deposition in a foreign language. If an interpreter will be
used during the deposition, the party calling the witness must initiate
a conference with the Board at least 5 business days before the
deposition.
(e) Manner of taking deposition testimony. (1) Before giving
deposition testimony, each witness shall be duly sworn according to law
by the officer before whom the deposition is to be taken. The officer
must be authorized to take testimony under 35 U.S.C. 23.
(2) The testimony shall be taken in answer to interrogatories with
any questions and answers recorded in their regular order by the
officer, or by some other disinterested person in the presence of the
officer, unless the presence of the officer is waived on the record by
agreement of all parties.
(3) Any exhibits used during the deposition must be numbered as
required by § 42.63(b), and must, if not previously served, be
served at the deposition. Exhibits objected to shall be accepted
pending a decision on the objection.
(4) All objections made at the time of the deposition to the
qualifications of the officer taking the deposition, the manner of
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taking it, the evidence presented, the conduct of any party, and any
other objection to the deposition shall be noted on the record by the
officer.
(5) When the testimony has been transcribed, the witness shall read
and sign (in the form of an affidavit) a transcript of the deposition
unless:
(i) The parties otherwise agree in writing;
(ii) The parties waive reading and signature by the witness on the
record at the deposition; or
(iii) The witness refuses to read or sign the transcript of the
deposition.
(6) The officer shall prepare a certified transcript by attaching a
certificate in the form of an affidavit signed and sealed by the
officer to the transcript of the deposition. Unless the parties waive
any of the following requirements, in which case the certificate shall
so state, the certificate must state:
(i) The witness was duly sworn by the officer before commencement
of testimony by the witness;
(ii) The transcript is a true record of the testimony given by the
witness;
(iii) The name of the person who recorded the testimony and, if the
officer did not record it, whether the testimony was recorded in the
presence of the officer;
(iv) The presence or absence of any opponent;
(v) The place where the deposition was taken and the day and hour
when the deposition began and ended;
(vi) The officer has no disqualifying interest, personal or
financial, in a party; and
(vii) If a witness refuses to read or sign the transcript, the
circumstances under which the witness refused.
(7) The officer must promptly provide a copy of the transcript to
all parties. The testimony must be filed by proponent as an exhibit.
(8) Any objection to the content, form, or manner of taking the
deposition, including the qualifications of the officer, is waived
unless made on the record during the deposition and preserved in a
timely filed motion to exclude.
(f) Costs. Except as the Board may order or the parties may agree
in writing, the proponent of the direct testimony shall bear all costs
associated with the testimony, including the reasonable costs
associated with making the witness available for the cross-examination.
§ 42.54 Protective order.
(a) A party or any person from whom discovery of confidential
information is sought may file a motion to seal where the motion to
seal contains a proposed protective order. The motion must include a
certification that the moving party has in good faith conferred or
attempted to confer with other affected parties in an effort to resolve
the dispute. The Board may, for good cause, issue an order to protect a
party or person from disclosing confidential information, including,
but not limited to, one or more of the following:
(1) Forbidding the disclosure or discovery;
(2) Specifying terms, including time and place, for the disclosure
or discovery;
(3) Prescribing a discovery method other than the one selected by
the party seeking discovery;
(4) Forbidding inquiry into certain matters, or limiting the scope
of disclosure or discovery to certain matters;
(5) Designating the persons who may be present while the discovery
is conducted;
(6) Requiring that a deposition be sealed and opened only by order
of the Board;
(7) Requiring that a trade secret or other confidential research,
development, or commercial information not be revealed or be revealed
only in a specified way; and
(8) Requiring that the parties simultaneously file specified
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documents or information in sealed envelopes, to be opened as the Board
directs.
(b) [Reserved].
§ 42.55 Confidential information in a petition.
A petitioner filing confidential information with a petition may,
concurrent with the filing of the petition, file a motion to seal with
a proposed protective order as to the confidential information. The
petitioner may serve the confidential information under seal. The
patent owner may only access the sealed confidential information prior
to the institution of the trial by agreeing to the terms of the
proposed protective order. The institution of the requested trial will
constitute a grant of the motion to seal unless otherwise ordered by
the Board.
§ 42.56 Expungement of confidential information.
After denial of a petition to institute a trial or after final
judgment in a trial, a party may file a motion to expunge confidential
information from the record.
§ 42.61 Admissibility.
(a) Evidence that is not taken, sought, or filed in accordance with
this subpart is not admissible.
(b) Records of the Office. Certification is not necessary as a
condition to admissibility when the evidence to be submitted is a
record of the Office to which all parties have access.
(c) Specification and drawings. A specification or drawing of a
United States patent application or patent is admissible as evidence
only to prove what the specification or drawing describes. If there is
data in the specification or a drawing upon which a party intends to
rely to prove the truth of the data, an affidavit by an individual
having first-hand knowledge of how the data was generated must be
filed.
§ 42.62 Applicability of the Federal Rules of Evidence.
(a) Generally. Except as otherwise provided in this subpart, the
Federal Rules of Evidence shall apply to a proceeding.
(b) Exclusions. Those portions of the Federal Rules of Evidence
relating to criminal proceedings, juries, and other matters not
relevant to proceedings under this subpart shall not apply.
(c) Modifications in terminology. Unless otherwise clear from
context, the following terms of the Federal Rules of Evidence shall be
construed as indicated:
Appellate court means United States Court of Appeals for the
Federal Circuit.
Civil action, civil proceeding, and action mean trial.
Courts of the United States, U.S. Magistrate, court, trial court,
trier of fact, and judge mean Board.
Hearing means as defined in Federal Rule of Evidence 804(a)(5), the
time for taking testimony.
Judicial notice means official notice.
Trial or hearing in Federal Rule of Evidence 807 means the time for
taking testimony.
(d) In determining foreign law, the Board may consider any relevant
material or source, including testimony, whether or not submitted by a
party or admissible under the Federal Rules of Evidence.
§ 42.63 Form of evidence.
(a) Exhibits required. Evidence consists of affidavits, transcripts
of depositions, documents, and things. All evidence must be filed in
the form of an exhibit.
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(b) Translation required. When a party relies on a document or is
required to produce a document in a language other than English, a
translation of the document into English and an affidavit attesting to
the accuracy of the translation must be filed with the document.
(c) Exhibit numbering. Each party's exhibits must be uniquely
numbered sequentially in a range the Board specifies. For the
petitioner, the range is 1001-1999, and for the patent owner, the range
is 2000-2999.
(d) Exhibit format. An exhibit must conform with the requirements
for papers in § 42.6 and the requirements of this paragraph.
(1) Each exhibit must have an exhibit label.
(i) An exhibit filed with the petition must include the
petitioner's name followed by a unique exhibit number.
(ii) For exhibits not filed with the petition, the exhibit label
must include the party's name followed by a unique exhibit number, the
names of the parties, and the trial number.
(2) When the exhibit is a paper:
(i) Each page must be uniquely numbered in sequence; and
(ii) The exhibit label must be affixed to the lower right corner of
the first page of the exhibit without obscuring information on the
first page or, if obscuring is unavoidable, affixed to a duplicate
first page.
(e) Exhibit list. Each party must maintain an exhibit list with the
exhibit number and a brief description of each exhibit. If the exhibit
is not filed, the exhibit list should note that fact.
§ 42.64 Objection; motion to exclude; motion in limine.
(a) Cross-examination deposition. An objection to the admissibility
of deposition evidence must be made during the deposition. Evidence to
cure the objection must be provided during the deposition, unless the
parties to the deposition stipulate otherwise on the deposition record.
(b) Other than cross-examination deposition. For evidence other
than cross-examination deposition evidence:
(1) Objection. Any objection to evidence submitted during a
preliminary proceeding must be served within 10 business days of the
institution of the trial. Once a trial has been instituted, any
objection must be served within 5 business days of service of evidence
to which the objection is directed. The objection must identify the
grounds for the objection with sufficient particularity to allow
correction in the form of supplemental evidence.
(2) Supplemental evidence. The party relying on evidence to which
an objection is timely served may respond to the objection by serving
supplemental evidence within ten business days of service of the
objection.
(c) Motion to exclude. A motion to exclude evidence must be filed
to preserve any objection. The motion must identify the objections in
the record in order and must explain the objections.
(d) Motion in limine. A party may file a motion in limine for a
decision on the admissibility of evidence.
§ 42.65 Expert testimony; tests and data.
(a) Expert testimony that does not disclose the underlying facts or
data on which the opinion is based is entitled to little or no weight.
Testimony on United States patent law or patent examination practice
will not be admitted.
(b) If a party relies on a technical test or data from such a test,
the party must provide an affidavit explaining:
(1) Why the test or data is being used;
(2) How the test was performed and the data was generated;
(3) How the data is used to determine a value;
(4) How the test is regarded in the relevant art; and
(5) Any other information necessary for the Board to evaluate the
test and data.
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Oral Argument, Decision, and Settlement
§ 42.70 Oral argument.
(a) Request for oral argument. A party may request oral argument on
an issue raised in a paper at a time set by the Board. The request must be
filed as a separate paper and must specify the issues to be argued.
(b) Demonstrative exhibits must be served at least 5 business days
before the oral argument and filed no later than the time of the oral
argument.
§ 42.71 Decision on petitions or motions.
(a) Order of consideration. The Board may take up petitions or
motions for decisions in any order, may grant, deny, or dismiss any
petition or motion, and may enter any appropriate order.
(b) Interlocutory decisions. A decision on a motion without a
judgment is not final for the purposes of judicial review. A panel
decision on an issue will govern the trial. If a decision is not a
panel decision, the party may request that a panel rehear the decision.
When rehearing a non-panel decision, a panel will review the decision
for an abuse of discretion.
(c) Rehearing. A party dissatisfied with a decision may file a
request for rehearing. The burden of showing a decision should be
modified lies with the party challenging the decision. The request must
specifically identify all matters the party believes the Board
misapprehended or overlooked, and the place where each matter was
previously addressed in a motion, an opposition, or a reply. A request
for rehearing does not toll times for taking action. Any request must
be filed:
(1) Within 14 days of the entry of non-final decision; or
(2) Within 30 days of the entry of a final decision.
§ 42.72 Termination of trial.
The Board may terminate a trial without rendering judgment, where
appropriate, including where the trial is consolidated with another
proceeding or pursuant to a joint request under 35 U.S.C. 317(a) or
327(a).
§ 42.73 Judgment.
(a) A judgment disposes of all issues that were, or by motion could
have properly been, raised and decided.
(b) Request for adverse judgment. A party may request judgment
against itself at any time during a proceeding. Actions construed to be
a request for adverse judgment include:
(1) Disclaimer of the involved application or patent;
(2) Cancellation or disclaimer of a claim such that the party has
no remaining claim in the trial;
(3) Concession of unpatentability or derivation of the contested
subject matter; and
(4) Abandonment of the contest.
(c) Recommendation. The judgment may include a recommendation for
further action by an examiner or by the Director.
(d) Estoppel - (1) Petitioner other than in derivation proceeding. A
petitioner, or the real party in interest or privy of the petitioner,
is estopped in the Office from taking an action that is inconsistent
with a judgment as to any ground that the petitioner raised or
reasonably could have raised during the trial, except that estoppel
shall not apply to a petitioner, or to the real party in interest or
privy of the petitioner who has settled under 35 U.S.C. 317 or 327.
(2) In a derivation, the losing party who could have properly moved
for relief on an issue, but did not so move, may not take action in the
Office after the judgment that is inconsistent with that party's
failure to move, except that a losing party shall not be estopped with
| March 13, 2012 |
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respect to any contested subject matter for which that party was
awarded a favorable judgment.
(3) Patent applicant or owner. A patent applicant or owner whose
claim is canceled is precluded from taking action inconsistent with the
adverse judgment, including obtaining in any patent:
(i) A claim to substantially the same invention as the finally
refused or cancelled claim;
(ii) A claim that could have been filed in response to any properly
raised ground of unpatentability for a finally refused or cancelled
claim; or
(iii) An amendment of a specification or of a drawing that was
denied during the trial proceeding.
§ 42.74 Settlement.
(a) Board role. The parties may agree to settle any issue in a
proceeding, but the Board is not a party to the settlement and may
independently determine any question of jurisdiction, patentability, or
Office practice.
(b) Agreements in writing. Any agreement or understanding between
the parties made in connection with, or in contemplation of, the
termination of a proceeding shall be in writing and a true copy shall
be filed with the Board before the termination of the trial.
(c) Request to keep separate. A party to a settlement may request
that the settlement be treated as business confidential information and
be kept separate from the files of an involved patent or application.
The request must be filed with the settlement. If a timely request is
filed, the settlement shall only be available:
(1) To a Government agency on written request to the Board; or
(2) To any other person upon written request to the Board to make
the settlement agreement available, along with the fee specified in
§ 42.15(d) and on a showing of good cause.
Certificate
§ 42.80 Certificate.
After the Board issues a final written decision in an inter partes
review, post-grant review, or covered business method patent review and
the time for appeal has expired or any appeal has terminated, the
Office will issue and publish a certificate canceling any claim of the
patent finally determined to be unpatentable, confirming any claim of
the patent determined to be patentable, and incorporating in the patent
any new or amended claim determined to be patentable by operation of
the certificate.
2. Part 90 is added to read as follows:
PART 90 - JUDICIAL REVIEW OF PATENT TRIAL AND APPEAL BOARD DECISIONS
§
90.1 Scope.
90.2 Notice; service.
90.3 Time for appeal or civil action.
Authority: 35 U.S.C. 2(b)(2).
§ 90.1 Scope.
The provisions herein govern judicial review for Patent Trial and
Appeal Board decisions under chapter 13 of title 35, United States
Code. Judicial review of decisions arising out of inter partes
reexamination proceedings that are requested under 35 U.S.C. 311, and
where available, judicial review of decisions arising out of
interferences declared pursuant to 35 U.S.C. 135 continue to be
governed by the pertinent regulations in effect on July 1, 2012.
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§ 90.2 Notice; service.
(a) For an appeal under 35 U.S.C. 141. (1) In all appeals, the
notice of appeal required by 35 U.S.C. 142 must be filed with the
Director of the United States Patent and Trademark Office as provided
in § 104.2 of this title. A copy of the notice of appeal must also
be filed with the Patent Trial and Appeal Board in the appropriate
manner provided in § 41.10(a), 41.10(b), or 42.6(b).
(2) In all appeals, the party initiating the appeal must comply
with the requirements of the Federal Rules of Appellate Procedure and
Rules for the United States Court of Appeals for the Federal Circuit,
including:
(i) Serving the requisite number of copies on the Court; and
(ii) Paying the requisite fee for the appeal.
(3) Additional requirements. (i) In appeals arising out of an ex parte
reexamination proceeding ordered pursuant to § 1.525, notice of the appeal
must be served as provided in § 1.550(f) of this title.
(ii) In appeals arising out of an inter partes review, a post-grant
review, a covered business method patent review, or a derivation
proceeding, notice of the appeal must be served as provided in § 42.6(e)
of this title.
(b) For a notice of election under 35 U.S.C. 141(d) to proceed
under 35 U.S.C. 146. (1) Pursuant to 35 U.S.C. 141(d), if an adverse
party elects to have all further review proceedings conducted under 35
U.S.C. 146 instead of under 35 U.S.C. 141, that party must file a
notice of election with the United States Patent and Trademark Office
as provided in § 104.2.
(2) A copy of the notice of election must also be filed with the
Patent Trial and Appeal Board in the manner provided in § 42.6(b).
(3) A copy of the notice of election must also be served where
necessary pursuant to § 42.6(e).
(c) For a civil action under 35 U.S.C. 146. The party initiating an
action under 35 U.S.C. 146 must file a copy of the complaint no later
than five business days after filing the complaint in district court
with the Patent Trial and Appeal Board in the manner provided in
§ 42.6(b), and the Office of the Solicitor pursuant to § 104.2.
Failure to comply with this requirement can result in further action
within the United States Patent and Trademark Office consistent with
the final Board decision.
§ 90.3 Time for appeal or civil action.
(a) Filing deadline - (1) For an appeal under 35 U.S.C. 141. The
notice of appeal filed pursuant to 35 U.S.C. 142 must be filed with the
Director of the United States Patent and Trademark Office no later than
sixty-three (63) days after the date of the final Board decision. Any
notice of cross-appeal is controlled by Rule 4(a)(3) of the Federal
Rules of Appellate Procedure, and any other requirement imposed by the
Rules of the United States Court of Appeals for the Federal Circuit.
(2) For a notice of election under 35 U.S.C. 141(d). The time for
filing a notice of election under 35 U.S.C. 141(d) is governed by 35
U.S.C. 141(d).
(3) For a civil action under 35 U.S.C. 145 or 146. (i) A civil
action must be commenced no later than sixty-three (63) days after the
date of the final Board decision.
(ii) The time for commencing a civil action pursuant to a notice of
election under 35 U.S.C. 141(d) is governed by 35 U.S.C. 141(d).
(b) Time computation - (1) Rehearing. A timely request for rehearing
will reset the time for appeal or civil action to no later than sixty-
three (63) days after action on the request. Any subsequent request for
rehearing from the same party in the same proceeding will not reset the
time for seeking judicial review, unless the additional request is
permitted by order of the Board.
(2) Holidays. If the last day for filing an appeal or civil action
falls on a Federal holiday in the District of Columbia, the time is
extended pursuant to 35 U.S.C. 21(b).
| March 13, 2012 |
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(c) Extension of time. (1) The Director, or his designee, may
extend the time for filing an appeal, or commencing a civil action,
upon written request if:
(i) Requested before the expiration of the period for filing an
appeal or commencing a civil action, and upon a showing of good cause;
or
(ii) Requested after the expiration of the period for filing an
appeal of commencing a civil action, and upon a showing that the
failure to act was the result of excusable neglect.
(2) The request must be filed as provided in § 104.2 of this
title.
January 31, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
| Patents Available for License or Sale |
Patents Available for License or Sale
8,025,117 POWER AXLE FOR A COMMERCIAL VEHICLE
Atty: Theresa M. Seal, Esq., Reg No. 46,177
Contact: David P. Gaudio, Esq., The Inventors Network, Inc.
332 Academy Street, Carnegie, PA 15106
(Voice) 412-278-0607
(Fax) 412-278-1693
(Email) david@inventorsnetwork.net
7,181,136 APPARATUS FOR STEREOSCOPIC PHOTOGRAPHY
Contact: Zoran Perisic
14622 Ventura Bld.,
Sherman Oaks, CA 91403
(Voice) 818-730-7450
(Email) zoptic@earthlink.net
7,988,296 APPARATUS FOR PROJECTING TWO-DIMENSIONAL IMAGES AS
PAIRS OF PSEUDO-STEREOSCOPIC IMAGES
Contact: Zoran Perisic
14622 Ventura Bld.,
Sherman Oaks, CA 91403
(Voice) 818-730-7450
(Email) zoptic@earthlink.net
8,062,282 METHODS AND APPARATUS FOR TEMPORARILY OCCLUDING
BODY OPENINGS
Contact: Gloria Kolb
20 Clearview Dr.
Sandy Hook CT 06482
(Voice) (781) 985-0563
(Fax) (305) 832-2906
(Email) gloroko@gmail.com
7,071,686 MAGNETIC LIQUID CRYSTAL DISPLAY
Contact: Richard Pivnicka, Esq
108 Ramona Road
Portola Valley, CA 94028
(Voice) 415-850-7051
(Fax) 650-851-8442
(Email) pivnicka@earthlink.net
6,493,631 GEOPHYSICAL INERTIAL NAVIGATION SYSTEM
Contact: Richard Pivnicka, Esq
108 Ramona Road
Portola Valley, CA 94028
(Voice) 415-850-7051
(Fax) 650-851-8442
(Email) pivnicka@earthlink.net
6,012,746 UNIVERSAL, SAND DISPERSION APPARATUS
FOR MOTOR VEHICLES
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
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Attorney: John Gugliotta, P.E.
Contact: Grace Girdwain, (Consultant)
8320 Nashville Ave
Burbank, IL 60459-2333
(Voice) 330-253-2225
(Voice) 708-599-4679
(Fax) 888-298-0230
(Email) patent@inventorshelp.com
7,950,702 RECEPTACLE FOR A GATE DROP ROD
Attorney: Litman Law
Manassas, VA 20110
Contact: Daniel Adams
P.O. Box 1102
Hoopsport, WA 98548
(Voice) 360-877-9570
(Email) adamsdan@HCTC.com
6,564,414 PORTABLE RAMP WITH PAD
Attorney: Barlett & Sherer
Contact: Donald Jamison
26 Deer Road
Fawn Grove, PA 17321
(Voice) 717-382-4442
(Fax) 717-382-4442
(Email) ljamison@zoominternet.net
8,037,931 HYBRID WATER HEATING SYSTEM
Attorney: Robert Hess
Hess Patent Law Firm
Contact: Gordan Whelan
73 Iroquois Road
Stamford, CT 06902
(Voice) 203-357-8449
(Fax) 203-975-0724
(Emailgordon@ecohybridsolar.com
6,381,538 VEHICLE SPECIFIC HAZARD ESTIMATION, PRESENTATION,
AND ROUTE PLANNING BASED ON METEOROLOGICAL AND
ENVIRONMENTAL DATA
Attorney: Peter a. Shaddock II, Esq.
Contact: Peter a. Shaddock II, Esq.
Wooten & Shaddock, PLC
1435 Crossways Boulevard
Suite 303
Chesapeake, VA 23320
(Voice) 757-452-4041
(Fax) 757-452-4042
(Email) pshaddock@wootenshaddock.com
8,059,946 CONCENTRATED THERMAL RADIATION TRANSFER SYSTEM FROM
ELECTRICALLY PRODUCED SOURCE
Contact: John Williams
2240 Brooks Rd.
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
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Dacula, GA. 30019
(Voice) 770-682-0689
(Email) ableelectric@bellsouth.net
D. 649,304 REVERSIBLE COLLAR
Contact: Ms. Terry Cupples
197607 East Third Avenue
Kennewick, WA. 99337
(Voice) 509-430-1267
(Email) cupples.terry@gmail.com
6,803,744 AN ALIGNMENT INDEPENDENT AND SELF ALIGNING INDUCTIVE
POWER TRANSFER SYSTEM
Attorney: David Dort
Contact: Henry St. James Fitzgerald ESQ.
1620 N. George Mason Dr.
Arlington, VA 22205
(Voice) 703-587-3046
(Voice) 202-390-0397
(Fax) 703-536-9095
(Email) hstjf01@yahoo.com
Errata
"All reference to Patent No. D.653,935 to Daniel Genord, et al of South
Lyon, MI for DOOR LOCK appearing in the Official Gazette of February 14,
2012 should be deleted since no patent was granted."
"All reference to Patent No. D.654,080 to Kim E. Munjas of North Myrtle
Beach, SC for WRAP FOR A FLAT SCREEN TELEVISION OR COMPUTER MONITOR
appearing in the Official Gazette of February 14, 2012 should be deleted
since no patent was granted."
"All reference to Patent No. 8,113,022 to Richard G. Hyatt Jr. of
Shawsville, VA for ELECTRO-MECHANICAL CYLINDER PLUG appearing in the
Official Gazette of February 14, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,113,023 to Richard G. Hyatt Jr. of
Shawsville, VA for ELECTRO-MECHANICAL CYCLINDER PLUG appearing in the
Official Gazette of February 14, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,113,052 to Werner Ruile, et al of Munich,
Germany for ROTATING MOTION SENSOR appearing in the Official Gazette of
February 14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,113,371 to JOHN e. Sanfilippo, et al of
Barrington Hills, IL for FLEXIBLE, STACKABLE CONTAINER AND METHOD AND SYSTEM
FOR MANUFACTURING SAME appearing in the Official Gazette of February 14, 2012
should be deleted since no patent was granted."
"All reference to Patent No. 8,113,509 to Hiroyuki Shingai of Nagoya,
Japan for SHEET EJECTOR AND SHEET FEEDER HAVING THE SAME FOR INSERTING
LATER-EJECTED SHEETS UNDER EARLIER-EJECTED SHEETS appearing in the Official
Gazette of February 14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,113,620 to Yuichi Ito of Mie-Ken, Japan for
INKJET RECORDING APPARATUS AND METHOD FOR CONTROLLING AN INKJET RECORDING
APPARATUS appearing in the Official Gazette of February 14, 2012 should be
deleted since no patent was granted."
"All reference to Patent No. 8,113,693 to Gregory W. Eng, et al of
Fremont, CA for MULTIPLE PIERCE REFECTIVE ANGLE TRANSFORMER appearing in the
Official Gazette of February 14, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,113,929 to Stuart J. Birrell, et al of
Ames, IA for COMBINANTION RESIDUE SPREADER AND COLLECTOR FOR SINGLE PASS
HARVESTING SYSTEMS appearing in the Official Gazette of February 14, 2012
should be deleted since no patent was granted."
"All reference to Patent No. 8,114,333 to Larry R. Marshall, et al of
Chesterfield, VA for SOLUTION SPUN FIBER PROCESS appearing in the Official
Gazette of February 14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,114,460 to Dusan Miljkovic, et al of
San Diego, CA for LOW-MYCO-TOXIN COFFEE CHERRY PRODUCTS appearing in the
Official Gazette of February 14, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,114,523 to John Horton of Peachtree City,
GA for LAYERED WOOD COMPOSITES appearing in the Official Gazette of
February 14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,114,798 to Matthew John Dejneka, et al of
Corning, NY for FINING AGENTS FOR SILICATED GLASSES appearing in the Official
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 342 |
Gazette of February 14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,114,998 to Juan-Miguel Jimenez, et al of
Abington, United Kingdom for PROCESS FOR PREPARING 5-FLUORO-1H-PYRAZOLO
[3,4,-B] PYRIDIN-3-AMINE AND DERIVATIVES THEREOF appearing in the Official
Gazette of February 14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,115,048 to Geoffrey C. Gurtner, et al of
Palo Alto, CA for TREATMENT OR PREVENTION OF SCRABS AND/OR KELOIDS appearing
in the Official Gazette of February 14, 20212 should be deleted since no
patent was granted."
"All reference to Patent No. 8,115,759 to Takateru Sawada, et al of Osaka,
Japan for PLASMA DISPLAY DEVICE AND METHOD FOR DRIVING THE SAME appearing in
the Official Gazette of February 14, 2012 should be deleted since no patent
was granted."
"All reference to Patent No. 8,116,094 to Masato Udaka, et al of Hyogo,
Japan for PRINTED CIRCUIT BOARD AND MOUNTING STRUCTURE FOR SURFACE MOUNTED
DEVICE appearing in the Official Gazette of February 14, 2012 should be
deleted since no patent was granted."
"All reference to Patent No. 8,116,136 to Uday Chandrasekhar, et al of
San Jose, CA for SENSING FOR MEMORY READ AND PROGRAM VERIFY OPERATIONS IN A
NON-VOLATILE MEMORY DEVICE appearing in the Official Gazette of February 14,
2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,116,150 to Yoshihiro Ueda of Yokohama-Shi,
Japan for RESISTANCE CHANGE MEMORY WITH CURRENT CONTROL AND VOLTAGE CONTROL
DURING A WRITE OPERATION, AND WRITE METHOD OF THE SAME appearing in the
Official Gazette of February 14, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,116,300 to Stephen P. Cooke, et al of
Calgary, Canada for SHARED DSL NETWORK AND DEVELOPMENT METHOD appearing in
the Official Gazette of February 14, 2012 should be deleted since no patent
was granted."
"All reference to Patent No. 8,116,861 to Michael J. Root, et al of Lino
Lake, MN for METHOD AND APPARATUS FOR A SMALL POWER SOURCE FOR AN IMPLANTABLE
DEVICE appearing in the Official Gazette of February 14, 2012 should be
deleted since no patent was granted."
"All reference to Patent No. 8,116,879 to William J. Carroll, et al of
La Center, WA for SYSTEM AND METHOD FOR STIMULATING SENSORY NERVES appearing
in the Official Gazette of February 14, 2012 should be deleted since no
patent was granted."
"All reference to Patent No. 8,116,930 to Olav M. Underdal, et al of
Kalamazoo, MI for DYNAMIC DECISION SEQUENCING METHOD AND APPARATUS FOR
OPTIMIZING A DIAGNOSTIC TEST PLAN appearing in the Official Gazette of
February 14, 2012 should be deleted since no patent was granted."
"All reference to Patent No. 8,117,065 to Tony Hoang, et al of Irvine, CA
for WIRELESS ELECTRONIC VEHICLE WINDOW DISPLAY SYSTEM appearing in the
Official Gazette of February 14, 2012 should be deleted since no patent was
granted."
"All reference to Patent No. 8,117,637 to Ingemar J. Cox of London,
United Kingdom for IDENTIFICATION WORKS, USING A SUB-LINEAR TIME SEARCH,
SUCH AS AN APPROXIMATE NEAREST NEIGHBORHOOD SEARCH, FOR INITIATING A
WORK-BASED ACTION, SUCH AS AN ACTION ON THE INTERNET appearing in the
Official Gazette of February 14, 2012 should be deleted since no patent was
granted."
Erratum
In the notice of Certificate of Correction appearing in October 25, 2011,
delete all reference to Patent No. 7,657,759, issue of October 4, 2011. The
requirements of 37 CFR 1.55(c) was not met for claim of foreign priority
"Nov. 16, 1998 (IL)...127093 and Dec. 30, 1998 (IL)...127869". The
certificate of correction should not have been issued.
| Certificates of Correction |
Certificates of Correction
for February 21, 2012
5,716,785 7,827,078 7,998,671 8,064,278
5,885,258 7,829,279 7,998,749 8,064,380
6,084,321 7,832,510 7,999,312 8,064,497
6,091,984 7,833,593 8,000,535 8,065,100
6,128,663 7,836,136 8,004,628 8,065,394
6,184,248 7,843,125 8,005,145 8,065,453
6,185,444 7,843,495 8,005,482 8,065,784
6,187,756 7,843,887 8,005,524 8,065,815
6,196,697 7,853,064 8,005,525 8,065,899
6,231,779 7,855,297 8,005,918 8,066,003
6,307,955C1 7,855,645 8,007,800 8,066,509
6,504,253 7,855,655 8,008,044 8,066,542
6,570,488 7,857,620 8,008,489 8,066,705
6,619,970 7,858,323 8,009,529 8,066,995
6,765,731 7,858,569 8,010,053 8,067,231
6,946,458 7,859,798 8,010,267 8,067,394
6,985,157 7,860,001 8,010,367 8,067,572
7,020,455 7,862,873 8,010,635 8,067,584
7,051,285 7,864,903 8,011,511 8,067,598
7,112,882 7,865,477 8,012,681 8,067,599
7,113,107 7,866,045 8,012,716 8,067,692
7,119,027 7,866,210 8,012,724 8,068,255
7,132,060 7,867,813 8,013,061 8,068,299
7,144,872 7,870,753 8,013,133 8,068,374
7,160,478 7,877,588 8,014,754 8,068,380
7,167,117 7,879,018 8,015,163 8,068,973
7,174,357 7,879,696 8,015,766 8,069,033
7,201,033 7,880,398 8,015,956 8,069,085
7,238,410 7,881,985 8,016,505 8,069,251
7,241,361 7,883,596 8,016,538 8,069,253
7,251,829 7,887,690 8,016,977 8,069,414
7,307,974 7,887,745 8,017,682 8,069,653
7,361,684 7,894,192 8,019,983 8,069,789
7,384,748 7,899,803 8,020,178 8,069,905
7,389,307 7,905,791 8,021,071 8,070,173
7,415,945 7,910,791 8,021,831 8,070,577
7,423,157 7,911,194 8,022,248 8,070,613
7,447,603 7,911,549 8,022,854 8,070,848
7,449,963 7,913,355 8,022,873 8,070,879
7,458,509 7,914,236 8,023,146 8,070,884
7,462,111 7,914,542 8,023,161 8,071,054
7,462,690 7,918,839 8,023,600 8,071,110
7,468,187 7,923,158 8,025,474 8,071,120
7,476,743 7,929,550 8,025,961 8,071,155
7,481,086 7,932,013 8,026,725 8,071,436
7,503,444 7,933,131 8,027,073 8,071,981
7,508,228 7,935,202 8,027,579 8,072,226
7,514,944 7,938,053 8,027,861 8,072,897
7,515,510 7,939,611 8,027,874 8,072,900
7,523,205 7,939,721 8,028,520 8,072,937
7,526,258 7,941,042 8,030,788 8,072,982
7,543,008 7,941,817 8,032,146 8,072,988
7,550,496 7,942,024 8,032,315 8,073,210
7,560,106 7,942,026 8,035,223 8,073,437
7,579,309 7,946,304 8,036,346 8,073,454
7,584,270 7,948,944 8,039,104 8,073,739
7,585,862 7,949,177 8,040,282 8,075,224
7,596,351 7,950,732 8,041,602 8,075,682
7,597,526 7,951,789 8,043,347 8,075,728
7,603,305 7,951,825 8,043,809 8,076,208
7,603,803 7,953,926 8,044,207 8,076,244
7,610,058 7,957,356 8,044,411 8,076,360
| March 13, 2012 |
US PATENT AND TRADEMARK OFFICE |
1376 OG 345 |
7,613,487 7,959,912 8,044,459 8,076,714
7,642,677 7,960,427 8,045,181 8,076,717
7,646,257 7,962,190 8,045,638 8,076,847
7,651,763 7,962,339 8,046,582 8,077,535
7,666,427 7,962,511 8,046,736 8,077,910
7,680,390 7,964,622 8,047,066 8,078,001
7,680,817 7,968,304 8,047,551 8,078,337
7,688,562 7,968,762 8,047,811 8,078,433
7,695,680 7,972,288 8,047,824 8,078,454
7,718,772 7,974,963 8,048,429 8,078,701
7,720,439 7,981,366 8,048,728 8,078,797
7,721,264 7,981,499 8,050,320 8,079,056
7,727,959 7,981,610 8,052,388 8,079,279
7,732,576 7,983,236 8,052,744 8,079,432
7,735,275 7,983,502 8,052,976 8,079,817
7,736,688 7,984,561 8,053,289 8,080,072
7,739,410 7,984,904 8,053,426 8,080,541
7,741,225 7,985,353 8,053,429 8,080,923
7,744,987 7,985,411 8,053,440 8,081,047
7,745,443 7,985,424 8,053,477 8,082,262
7,746,137 7,986,014 8,053,603 8,082,362
7,747,266 7,986,995 8,053,646 8,083,882
7,748,556 7,988,393 8,053,652 8,084,402
7,748,561 7,988,637 8,054,070 8,084,443
7,750,266 7,988,792 8,054,137 8,086,565
7,757,595 7,989,117 8,054,963 8,086,578
7,762,739 7,989,173 8,055,329 8,086,701
7,765,741 7,989,258 8,055,833 8,086,878
7,767,652 7,989,764 8,056,453 8,086,907
7,770,339 7,990,337 8,056,466 8,086,991
7,772,469 7,990,364 8,056,478 8,088,407
7,775,937 7,990,424 8,056,760 8,089,028
7,777,042 7,991,773 8,057,001 8,090,222
7,777,493 7,991,930 8,057,267 8,090,601
7,780,742 7,992,002 8,057,371 8,091,021
7,784,983 7,992,028 8,057,475 8,091,103
7,790,226 7,992,329 8,057,524 8,091,278
7,791,962 7,993,211 8,057,806 8,091,605
7,795,411 7,993,768 8,058,526 8,092,030
7,797,214 7,993,857 8,058,534 8,092,403
7,799,615 7,994,307 8,058,709 8,092,584
7,807,342 7,994,433 8,059,261 8,093,077
7,807,454 7,994,675 8,060,039 8,093,686
7,808,758 7,995,183 8,060,040 8,098,800
7,809,661 7,995,488 8,060,044 D. 616,864
7,812,787 7,996,180 8,061,180 D. 643,489
7,814,817 7,996,648 8,061,377 D. 648,257
7,816,369 7,997,966 8,061,868 D. 649,339
7,818,712 7,998,176 8,062,119 RE. 39,369
7,824,786 7,998,487 8,063,913 RE. 42,232
7,826,437 7,998,510 8,064,014 RE. 42,598
| Summary of Final Decisions Issued by the Trademark Trial and Appeal Board |
SUMMARY OF FINAL DECISIONS ISSUED BY THE TRADEMARK TRIAL AND APPEAL BOARD
February 6 – February 10, 2012
| Date Issued |
Type of Case(1) |
Proceeding or Appn. Number |
Party or Parties |
TTAB Panel (2) |
Issue(s) |
TTAB Decision |
Opposer’s or Petitioner’s mark and goods or services |
Applicant’s or Respondent’s mark and goods or services |
Mark and goods or services cited by Examining Attorney |
Issued as Precedent of TTAB |
| 2-6 |
EX |
77899445 |
The INX Group, Ltd. |
Quinn Kuhlke Bergsman* |
2(d) |
Refusal Affirmed |
|
EVOLVE ADVANCED DIGITAL SOLUTIONS (and design) [printing inks, coatings and varnishes] [printing machines for commercial or industrial use] |
EVOLUTION [offset printing presses, mechanical printing units, inking units, dampening units, paper roll change-over machines, mechanical printing machines] [computerized image data transmission apparatuses; control and monitoring devices for readable data carriers; software for printing technology and presses] [installation, maintenance and repair services for above goods] |
No |
| 2-6 |
EX |
77948331 |
Tequila Cuervo La Rojena, S.A. de C.V. |
Bergsman Wellington* Shaw |
2(e)(1) |
Refusal Affirmed as to the goods in Class 33 |
|
JOHNNY VEGAS [non-alcoholic cocktails (Class 32)] [alcoholic cocktails containing tequila (Class 33)] |
|
No |
| 2-6 |
EX |
77256390 |
Airescue International |
Kuhlke* Taylor Ritchie |
2(e)(1), 2(f) |
Refusals Affirmed |
|
AIRESCUE [fixed wing aircraft medical service transport anywhere in the world] |
|
No |
| 2-8 |
OPP
CANC |
91161570
92047126 |
ZAO Gruppa Predpriyatij OST v. ZAO Odessky Konjatschnyi Zawod
ZAO Odessky Konjatschnyi Zawod v. ZAO Gruppa Predpriyatij OST |
Seeherman Grendel Kuhlke* |
2(d)
Fraud; abandonment |
Opposition Sustained
Petition to Cancel Dismissed |
SHUSTOV (and design) [Alcoholic beverages, namely distilled spirits, distilled rice spirits, aperitif wines, alcoholic aperitif bitters, alcoholic honey drink, peppermint schnapps; alcoholic fruit-based beverages; sake; gin; rum; liqueurs, whisky; brandy; vodka] (opposer’s registration, subject of petition to cancel) |
SHUSTOFF [Alcoholic beverages except beers, namely aperitifs with a distilled alcoholic liquor base; distilled liquors; distilled spirits; wines; whisky; vodka; gin; prepared alcoholic cocktails; liqueurs; distilled beverages; bitters, namely schnapps and liqueurs; rum; liqueurs and spirits in the nature of digestives; spirituous alcoholic extracts] (the opposed application) |
|
No |
| 2-8 |
OPP
(ACR)
|
91197241 |
Lebanon Seaboard Corporation v. R & R Turf Supply, Inc. |
Seeherman* Bucher Bergsman |
2(d) |
Opposition Sustained
|
TRIFECTA [lawn seed] |
TURFECTA [grass seed] |
|
Yes |
| 2-9 |
EX |
77600178 |
Veneerstone, L.P. |
Bucher* Kuhlke Mermelstein |
23(c) |
Refusal Affirmed |
|
VENEERSTONE [decorative manufactured stone] |
|
No |
| 2-9 |
EX |
77911173 |
Christoph Geskes |
Kuhlke Taylor* Wellington |
2(e)(2), 6 |
Refusal Affirmed in the absence of disclaimer |
|
THE MUNICH (and design) [advertising; business management services; business administration; office functions; forestry management services; forestry management consultation] [a wide variety of services in the fields of insurance, reinsurance, subrogation, underwriting,; a wide variety of services in financial affairs, finance management, monetary exchange and monetary claims; and various real estate services] [medical and veterinary services; hygienic and beauty care for human beings; agricultural advice; forest habitat restoration] |
|
No |
| 2-10 |
CANC
(MD)
|
92054059 |
Robert Doyle v. Al Johnson’s Swedish Restaurant & Butik, Inc. |
Zervas Cataldo Mermelstein [Opinion "By the Board" (Adlin)] |
2(d) |
Refusal Affirmed
|
|
Goats on a roof of grass [restaurant services] [retail store and online retail store services featuring gifts, food, clothing, toys, linens, dolls, books and music] |
|
Yes |
(1) EX=Ex Parte Appeal; OPP=Opposition; CANC=Cancellation; CU=Concurrent Use; (SJ)=Summary Judgment; (MD)=Motion to Dismiss; (R)=Request for Reconsideration (2) *=Opinion Writer; (D)=Dissenting Panel Member
| Mailing and Hand Carry Addresses for Mail to the United States Patent and Trademark Office |
MAILING AND HAND CARRY ADDRESSES FOR
MAIL TO THE UNITED STATES PATENT AND TRADEMARK OFFICE
MAIL TO BE DIRECTED TO THE COMMISSIONER FOR PATENTS
For most correspondence (e.g., new patent applications) no mail stop
is required because the processing of the correspondence is routine.
If NO mail stop is included on the list below, no mail stop is required
for the correspondence. See the listing under "Mail to be Directed to the
Director of the Patent And Trademark Office" for additional mail stops
for patent-related correspondence. Only the specified type of document
should be placed in an envelope addressed to one of these special mail
stops. If any documents other than the specified type identified for each
special mail stop are addressed to that mail stop, they will be
significantly delayed in reaching the appropriate area for which they are
intended. The mail stop should generally appear as the first line in
the address.
Most correspondence may be submitted electronically. See the USPTO's
Electronic Filing System (EFS-Web) internet page
http://www.uspto.gov/patents/process/file/efs/index.jsp for additional
information.
Please address mail to be delivered by the United States Postal Service
(USPS) as follows:
Mail Stop _____
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
If no Mail Stop is indicated below, the line beginning Mail Stop should
be omitted from the address.
Except correspondence for Maintenance Fee payments, Deposit Account
Replenishments (see 37 CFR 1.25(c)(4)), and Licensing and Review (see 37 CFR
5.1(c) and 5.2(c)), please address patent-related correspondence to be
delivered by other delivery services (Federal Express (Fed Ex), UPS, DHL,
Laser, Action, Purolator, etc.) as follows:
United States Patent and Trademark Office
Customer Service Window, Mail Stop _____
Randolph Building
401 Dulany Street
Alexandria, VA 22314
Mail Stop
Designations Explanation
Mail Stop 12 Contributions to the Examiner Education Program.
Mail Stop 313(c) Petitions under 37 CFR 1.313(c) to withdraw a
patent application from issue after payment of
the issue fee and any papers associated with the
petition, including papers necessary for a
continuing application or a request for
continued examination (RCE).
Mail Stop AF Amendments and other responses after final
rejection (e.g., a notice of appeal (and any
request for pre-appeal brief conference)),
other than an appeal brief.
Mail Stop Amendment Information disclosure statements, drawings, and
replies to Office actions in patent applications
with or without an amendment to the application or
a terminal disclaimer. (Use Mail Stop AF for
replies after final rejection.)
Mail Stop Appeal For appeal briefs or other briefs under
Brief-Patents part 41 of title 37 of the Code of Federal
Regulations (e.g., former 37 CFR 1.192).
Mail Stop Public comments regarding patent-related
Comments-Patent regulations and procedures.
Mail Stop Conversion Requests under 37 CFR 1.53(c)(2) to convert a
nonprovisional application to a provisional
application and requests under 37 CFR 1.53(c)(3)
to convert a provisional application to a
nonprovisional application.
Mail Stop EBC Mail for the Electronic Business Center including:
Certificate Action Forms, Request for Customer
Number, and Requests for Customer Number Data
Change (USPTO Forms PTO-2042, PTO/SB/124A and 125A,
respectively) and Customer Number Upload
Spreadsheets and Cover Letters.
Mail Stop Expedited Only to be used for the initial filing of
Design design applications accompanied by a
request for expedited examination under
37 CFR 1.155.
Mail Stop Express Requests for abandonment of a patent
Abandonment application pursuant to 37 CFR 1.138,
including any petitions under 37 CFR
1.138(c) to expressly abandon an
application to avoid publication of the
application.
Mail Stop Applications under 35 U.S.C. 156 for patent term
Hatch-Waxman PTE extension based on regulatory review of a product
subject to pre-market review by a regulating
agency. This mail stop is also to be used for
additional correspondence regarding the
application for patent term extension under
35 U.S.C. 156. It is preferred that such initial
requests be hand-carried to:
Office of Patent Legal Administration
Room MDW 7D55
600 Dulany Street (Madison Building)
Alexandria, VA 22314
Mail Stop ILS Correspondence relating to international patent
classification, exchanges and standards.
Mail Stop Issue Fee All communications following the receipt of a
PTOL-85, "Notice of Allowance and Fee(s)
Due," and prior to the issuance of a patent
should be addressed to Mail Stop Issue Fee,
unless advised to the contrary.
Assignments are the exception. Assignments
(with cover sheets) should be faxed to
571-273-0140, electronically submitted
(http://epas.uspto.gov), or submitted in a
separate envelope and sent to Mail Stop
Assignment Recordation Services,
Director - U.S. Patent and Trademark Office
as shown below.
Mail Stop L&R All documents pertaining to applications subject
to secrecy order pursuant to 35 U.S.C. 181, or
national-security classified and required to be
processed accordingly. Such papers, petitions for
foreign filing license pursuant to 37 CFR 5.12(b)
for which expedited handling is requested, and
petitions for retroactive license under 37 CFR
5.25 may also be hand carried to Licensing and
Review:
Technology Center 3600, Office of the Director
Room 4B41
501 Dulany Street (Knox Building)
Alexandria, VA 22314
Mail Stop Missing Requests for a corrected filing receipt and
Parts replies to OPAP notices such as the Notice
of Omitted Items, Notice to File Corrected
Application Papers, Notice of Incomplete
Application, Notice to Comply with Nucleotide
Sequence Requirements, and Notice to File Missing
Parts of Application, and associated papers and
fees.
Mail Stop MPEP Submissions concerning the Manual of Patent
Examining Procedure.
Mail Stop Patent Ext. Applications for patent term extension or
adjustment under 35 U.S.C. 154 and any
communications relating thereto. This mail stop
is limited to petitions for patent term extension
under 35 U.S.C. 154 for applications filed
between June 8, 1995 and May 29, 2000, and patent
term adjustment (PTA) under 35 U.S.C. 154 for
applications filed on or after May 29, 2000.
For applications for patent term extension under
35 U.S.C. 156, use Mail Stop Hatch-Waxman PTE.
For applications for patent term extension or
adjustment under 35 U.S.C. 154 that are mailed
together with the payment of the issue fee, use
Mail Stop Issue Fee.
Mail Stop Patent Submission of comments regarding search templates.
Search Template
Comments
Mail Stop PCT Mail related to international applications filed
under the Patent Cooperation Treaty in the
international phase and in the national phase
under 35 U.S.C. 371 prior to mailing of a
Notification of Acceptance of Application Under
35 U.S.C. 371 and 37 CFR 1.495 (Form
PCT/DO/EO/903).
Mail Stop Petition Petitions to be decided by the Office of Petitions,
including petitions to revive and petitions to
accept late payment of issue fees or maintenance
fees.
Mail Stop PGPUB Correspondence regarding publication of patent
applications not otherwise provided, including:
requests for early publication made after filing,
rescission of a non-publication request, corrected
patent application publication, and refund of
publication fee.
Mail Stop Post In patented files: requests for changes of
Issue correspondence address, powers of attorney,
revocations of powers of attorney, withdrawal as
attorney or agent and submissions under 37
CFR 1.501. Designation of, or changes to, a fee
address should be addressed to Mail Stop M
Correspondence. Requests for Certificate of
Correction need no special mail stop, but
should be mailed to the attention of Certificate
of Correction Branch.
Mail Stop RCE Requests for continued examination under
37 CFR 1.114.
Mail Stop Correspondence pertaining to the reconstruction
Reconstruction of lost patent files.
Mail Stop Ex Parte Original requests for Ex Parte Reexamination
Reexam and all subsequent corresponcence other
than correspondence to the Office of the Solicitor
(see 37 CFR 1.1(a)(3) and 1.302(c)).
Mail Stop Inter Original requests for Inter Partes Reexamination
Partes Reexam and all subsequent correspondence other than
correspondence to the Office of the Solicitor
(see 37 CFR 1.1(a)(3) and 1.302(c)).
Mail Stop Reissue All new and continuing reissue application filings.
Mail Stop Sequence Submission of the computer readable form (CRF) for
applications with sequence listings, when the CRF
is not being filed with the patent application.
Information for addressing trademark-related correspondence may also be found
on the USPTO's web site at http://www.uspto.gov/patents/mail.jsp.
MAIL TO BE DIRECTED TO THE COMMISSIONER FOR TRADEMARKS
Please address trademark-related correspondence to be delivered by the
United States Postal Service (USPS), except documents sent to the Assignment
Services Division for recordation, requests for copies of trademark
documents, and documents directed to the Madrid Processing Unit, as follows:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Mail to be delivered by the USPS to the Office's Madrid Processing Unit,
must be mailed to:
Madrid Processing Unit
600 Dulany Street
MDE-7B87
Alexandria, VA 22314-5796
Mail to be delivered by the USPS to the Office's Deputy Commissioner for
Trademark Policy regarding Letters of Protest must be mailed to:
Letter of Protest
ATTN: Deputy Commissioner for Trademark Policy
600 Dulany Street
Alexandria, VA 22314-5796
Mail to be delivered by the USPS to the Director regarding the Fastener
Quality Act (FQA) must be mailed to:
Director, USPTO
ATTN: FQA
600 Dulany Street, MDE-10A71
Alexandria, VA 22314-5793
Mail to be delivered by the USPS to the Commissioner regarding the
recordal of a Native American Tribal Insignia (NATI) must be mailed to:
Native American Tribal Insignia
ATTN: Commissioner for Trademarks
600 Dulany Street
MDE-10A71
Alexandria, VA 22314-5793
Do NOT send any of the following via USPS certified mail or with a
"signature required" option: submissions to the Madrid Processing Unit,
Letters of Protest, applications for recordal of insignia under the
Fastener Quality Act, notifications of Native American Tribal Insignia.
Trademark-related mail to be delivered by hand or other private courier
or delivery service (e.g., UPS, Federal Express) to the Trademark Operation,
the Trademark Trial and Appeal Board, or the Office's Madrid Processing Unit,
must be delivered to:
Trademark Assistance Center
Madison East, Concourse Level Room C 55
600 Dulany Street
Alexandria, VA 22314
Information for addressing trademark-related correspondence may also be found
on the USPTO's web site at http://www.uspto.gov/trademarks/mail.jsp.
MAIL TO BE DIRECTED TO THE DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE
Please address mail to be directed to a mail stop identified below to
be delivered by the United States Postal Service (USPS) as follows (unless
otherwise instructed):
Mail Stop _____
Director of the U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
Mail Stop
Designations Explanation
Mail Stop 3 Mail for the Office of Personnel from NFC.
Mail Stop 6 Mail for the Office of Procurement.
Mail Stop 8 All papers for the Office of the Solicitor.
Mail Stop 11 Mail for the Electronic Ordering Service (EOS).
Mail Stop 13 Mail for the Employee and Labor Relations Division.
Mail Stop 16 Mail related to refund requests, other than
requests for refund of a patent application
publication fee. Such requests should be directed
to Mail Stop PGPub.
Mail Stop 17 Invoices directed to the Office of Finance.
Mail Stop 24 Mail for the Inventor's Assistance Program,
including complaints about Invention Promoters.
Mail Stop 171 Vacancy Announcement Applications.
Mail Stop Assignment All assignment documents, security interests,
Recordation Services and other documents to be recorded in the
Assignment records. Note that documents with
cover sheets that are faxed to 571-273-0140 or
submitted electronically (http://epas.uspto.gov)
are processed much more quickly than those
submitted by mail.
Mail Stop Document All requests for certified or uncertified
Services copies of patent or trademark documents.
Mail Stop EEO Mail for the Office of Civil Rights.
Mail Stop External Mail for the Office of External Affairs.
Affairs
Mail Stop Interference Communications relating to interferences and
applications and patents involved in interference.
Mail Stop M Mail to designate or change a fee
Correspondence address, or other correspondence related to
maintenance fees, except payments of
maintenance fees in patents. See below for
the address for maintenance fee payments.
Mail Stop OED Mail for the Office of Enrollment and Discipline.
Maintenance Fee Payments
Unless submitted electronically over the Internet at www.uspto.gov, or by
facsimile, payments of maintenance fees in patents should be mailed through
the United States Postal Service.
Mailing address if paying with a check or money order:
United States Patent and Trademark Office
P.O. Box 979070
St. Louis, MO 63197-9000
Mailing address if paying by credit card or deposit account (or by hand-
delivery):
Director of the U.S. Patent and Trademark Office
Attn.: Maintenance Fees
2051 Jamieson Avenue, Suite 300
Alexandria, Virginia 22314
Information about the Maintenance Fee Branch may also be found on the
USPTO's web site at http://www.uspto.gov/about/offices/cfo/finance/receipts_
division.jsp.
Deposit Account Replenishments
To send payment to replenish deposit accounts, send the payments through
the United States Postal Service to:
United States Patent and Trademark Office
P.O. Box 979065
St. Louis, MO 63197-9000
Or
Director of the U.S. Patent and Trademark Office
Attn.: Deposit Accounts
2051 Jamieson Avenue, Suite 300
Alexandria, VA 22314
Alternatively, deposit account replenishments (Attn: Deposit Accounts)
using hand-delivery and delivery by private courier (e.g., FedEx, UPS, etc.)
may be delivered to:
Director of the U.S. Patent and Trademark Office
Attn.: Deposit Accounts
2051 Jamieson Avenue, Suite 300
Alexandria, VA 22314
Information abount deposit account replenishments may also be found on
the USPTO's web site at
http://www.uspto.gov/about/offices/cfo/finance/Deposit_Account_
Replenishments.jsp
Top of Notices
| Reference Collections of U.S. Patents Available for Public Use in Patent and Trademark Resource Centers |
Reference Collections of U.S. Patents Available for
Public Use in Patent and Trademark Resource Centers
The following libraries, designated as Patent and Trademark Resource Centers
(PTRCs), provide public access to patent and trademark information received
from the United States Patent and Trademark Office (USPTO). This
information includes all issued patents, all registered trademarks, the
Official Gazette of the U.S. Patent and Trademark Office, search tools such
as the Cassis CD-ROM suite of products and supplemental information in a
variety of formats including online, optical disc, microfilm and paper.
Each PTRC also offers access to USPTO resources on the Internet and to
PubWEST (Web based examiner search tool), a system used by patent examiners
that is not available on the Internet.
Staff assistance and training is provided in the use of this information.
All information is available free of charge. However, there may be charges
associated with the use of photocopying and related services. Hours of
service to the public vary, and anyone contemplating use of these
collections at a particular library is urged to contact that library in
advance about its services and hours to avoid inconvenience.
State Name of Library Telephone Contact
Alabama Auburn University Libraries (334) 844-1737
Birmingham Public Library (205) 226-3620
Alaska Fairbanks: Keith B. Mather Library,
Geophysical Institute,
University of Alaska, Fairbanks (907) 474-2636
Arkansas Little Rock: Arkansas State
Library (501) 682-2053
California Los Angeles Public Library (213) 228-7220
Riverside: University of
California, Riverside, Orbach
Science Library (951) 827-3316
Sacramento: California State
Library (916) 654-0261
San Diego Public Library (619) 236-5813
San Francisco Public Library (415) 557-4500
Sunnyvale Public Library (408) 730-7300
Colorado Denver Public Library (720) 865-1711
Connecticut Fairfield: Ryan-Matura Library
Sacred Heart University (203) 371-7726
Delaware Newark: University of Delaware
Library (302) 831-2965
Dist. of Columbia Washington: Howard University
Libraries (202) 806-7252
Florida Fort Lauderdale: Broward County
Main Library (954) 357-7444
Miami-Dade Public Library (305) 375-2665
Orlando: University of Central
Florida Libraries (407) 823-2562
Georgia Atlanta: Library and Information
Center, Georgia Institute of
Technology (404) 385-7185
Hawaii Honolulu: Hawaii State Library (808) 586-3477
Illinois Chicago Public Library (312) 747-4450
Macomb: Western Illinois
University Libraries (309) 298-2722
Indiana Indianapolis-Marion County Public
Library (317) 269-1741
West Lafayette Siegesmund
Engineering Library,
Purdue University (765) 494-2872
Iowa Davenport: Davenport Public Library (563) 326-7832
Kansas Wichita: Ablah Library, Wichita
State University 1 (800) 572-8368
Kentucky Louisville Free Public Library (502) 574-1611
Louisiana Baton Rouge: Troy H. Middleton
Library, Louisiana State University (225) 388-8875
Maine Orono: Raymond H. Fogler Library,
University of Maine (207) 581-1678
Maryland Baltimore: University of Baltimore
Law Library (410) 837-4554
College Park: Engineering and
Physical Sciences Library,
University of Maryland (301) 405-9157
Massachusetts Amherst: Physical Sciences Library,
University of Massachusetts (413) 545-2765
Boston Public Library (617) 536-5400
Ext. 4256
Michigan Ann Arbor: Art, Architecture &
Engineering Library,
University of Michigan (734) 647-5735
Big Rapids: Ferris Library for
Information, Technology &
Education, Ferris State
University (231) 592-3602
Detroit: Public Library (313) 481-1391
Minnesota Hennepin County Library
Minneapolis Central Library (952) 847-8000
Mississippi Jackson: Mississippi Library
Commission (601) 961-4111
Missouri Kansas City: Linda Hall Library (816) 363-4600
Ext. 724
St. Louis Public Library (314) 352-2900
Montana Butte: Montana Tech Library of
the University of Montana (406) 496-4281
Nebraska Lincoln: Engineering Library,
University of Nebraska-Lincoln (402) 472-3411
Nevada Reno: University of Nevada, Reno,
Mathewson-IGT Knowledge Center (775) 784-6500
Ext. 257
New Jersey Newark Public Library (973) 733-7779
Piscataway: Library of Science and
Medicine, Rutgers University (732) 445-2895
New Mexico Albuquerque: University of
New Mexico General Library (505) 277-4412
New York Albany: New York State Library (518) 474-5355
Buffalo and Erie County Public
Library (716) 858-7101
Rochester Public Library (716) 428-8110
New York: New York Public Library,
Science Industry & Business Library (212) 592-7000
North Carolina Charlotte: J. Murrey Atkins
Library, (704) 687-2241
University of North Carolina at
Charlotte (919) 515-2935
North Dakota Grand Forks: Chester Fritz Library,
University of North Dakota (701) 777-4888
Ohio Akron - Summit County Public (330) 643-9075
Library
Cincinnati and Hamilton County,
Public Library of (513) 369-6932
Cleveland Public Library (216) 623-2870
Dayton: Paul Laurence Dunbar
Library, Wright State University (937) 775-3521
Toledo/Lucas County Public Library (419) 259-5209
Oklahoma Stillwater: Oklahoma State
University Edmon Low Library (405) 744-6546
Pennsylvania Philadelphia, The Free Library of (215) 686-5394
Pittsburgh, Carnegie Library of (412) 622-3138
University Park: PAMS Library,
Pennsylvania State University (814) 865-7617
Puerto Rico Bayamon: Learning Resources Center,
University of Puerto Rico (787) 993-0000
Ext. 3222
Mayaquez General Library,
University of Puerto Rico (787) 832-4040
Ext. 2023
Bayamon, Learning Resources Center,
University of Puerto Rico (787) 786-5225
Rhode Island Providence Public Library (401) 455-8027
South Carolina Clemson University Libraries (864) 656-3024
South Dakota Rapid City: Devereaux Library,
South Dakota School of Mines and
Technology (605) 394-1275
Tennessee Nashville: Stevenson Science and
Engineering Library, Vanderbilt
University (615) 322-2717
Texas Austin: McKinney Engineering
Library, University of Texas at
Austin (512) 495-4511
College Station: West Campus
Library, Texas A & M University (979) 845-2111
Dallas Public Library (214) 670-1468
Houston: The Fondren Library, Rice
University (713) 348-5483
Lubbock: Texas Tech University (806) 742-2282
San Antonio Public Library (210) 207-2500
Utah Salt Lake City: Marriott Library,
University of Utah (801) 581-8394
Vermont Burlington: Bailey/Howe Library,
University of Vermont (802) 656-2542
Washington Seattle: Engineering Library,
University of Washington (206) 543-0740
West Virginia Morgantown: Evansdale Library,
West Virginia University (304) 293-4695
Wisconsin Wendt Commons Library,
University of Wisconsin-Madison (608) 262-0696
Milwaukee Public Library (414) 286-3051
Wyoming Cheyenne: Wyoming State Library (307) 777-7281
Top of Notices
| Patent Technology Centers |
| PATENT TECHNOLOGY CENTERS |
| AVERAGE FILING DATE OF APPLICATIONS RECEIVING A FIRST OFFICE ACTION IN THE LAST 3 MONTHS1
|
Technology
Center |
GAU |
Avg Filing Date |
| 1600 |
BIOTECHNOLOGY, AND ORGANIC CHEMISTRY |
| |
1610 |
07/02/2010 |
| |
1620 |
07/20/2010 |
| |
1630 |
08/01/2010 |
| |
1640 |
09/07/2010 |
| |
1650 |
06/04/2010 |
| |
1660 |
12/25/2010 |
| |
TOTAL |
07/26/2010 |
| |
|
|
| 1700 |
CHEMICAL AND MATERIALS ENGINEERING AND DESIGNS |
| |
1710 |
12/19/2009 |
| |
1720 |
01/21/2010 |
| |
1730 |
08/10/2010 |
| |
1740 |
06/10/2010 |
| |
1750 |
01/03/2010 |
| |
1760 |
08/31/2010 |
| |
1770 |
06/16/2010 |
| |
1780 |
04/26/2010 |
| |
1790 |
12/28/2009 |
| |
TOTAL |
05/08/2010 |
| |
|
|
| 2100 |
COMPUTER ARCHITECTURE AND SOFTWARE |
| |
2110 |
09/19/2009 |
| |
2120 |
12/04/2009 |
| |
2150 |
04/04/2010 |
| |
2160 |
06/04/2010 |
| |
2170 |
02/15/2010 |
| |
2180 |
04/07/2010 |
| |
2190 |
11/15/2008 |
| |
TOTAL |
12/19/2009 |
| |
|
|
| 2400 |
NETWORKING, MULTIPLEXING, CABLE AND SECURITY |
| |
2420 |
07/11/2009 |
| |
2430 |
07/17/2009 |
| |
2440 |
02/06/2010 |
| |
2450 |
02/03/2010 |
| |
2460 |
09/25/2009 |
| |
2470 |
10/13/2009 |
| |
2480 |
05/29/2009 |
| |
2490 |
08/07/2009 |
| |
TOTAL |
09/25/2009 |
| |
|
|
| 2600 |
COMMUNICATIONS |
| |
2610 |
01/03/2010 |
| |
2620 |
10/16/2009 |
| |
TOTAL |
11/22/2009 |
| |
|
|
| 2800
|
SEMICONDUCTORS/MEMORY, CIRCUITS/MEASURING AND TESTING, OPTICS/PHOTOCOPYING |
| |
2810 |
07/11/2010 |
| |
2820 |
05/26/2010 |
| |
2830 |
05/02/2010 |
| |
2840 |
07/08/2010 |
| |
2850 |
02/03/2010 |
| |
2860 |
05/08/2010 |
| |
2870 |
05/17/2010 |
| |
2880 |
05/17/2010 |
| |
2890 |
07/11/2010 |
| |
TOTAL |
05/14/2010 |
| |
|
|
| |
|
|
| 2900
|
|
| |
2910 |
05/11/2011 |
| |
TOTAL |
05/11/2011 |
| |
|
|
| |
|
|
| 3600
|
TRANSPORTATION, CONSTRUCTION, ELECTRONIC COMMERCE, AGRICULTURE, NATIONAL SECURITY AND LICENSE AND REVIEW
|
| |
3610 |
05/29/2010 |
| |
3620 |
05/08/2010 |
| |
3630 |
07/26/2010 |
| |
3640 |
06/22/2010 |
| |
3650 |
02/21/2010 |
| |
3660 |
02/03/2010 |
| |
3670 |
06/10/2010 |
| |
3680 |
04/17/2010 |
| |
3690 |
07/23/2010 |
| |
TOTAL |
05/14/2010 |
| |
|
|
| 3700
|
MECHANICAL ENGINEERING, MANUFACTURING AND PRODUCTS |
| |
3710 |
03/02/2010 |
| |
3720 |
01/21/2010 |
| |
3730 |
01/27/2010 |
| |
3740 |
08/31/2009 |
| |
3750 |
12/01/2009 |
| |
3760 |
03/11/2010 |
| |
3770 |
12/10/2009 |
| |
3780 |
11/12/2009 |
| |
TOTAL |
12/25/2009 |
| |
|
|
| |
1 Report last updated on 1-31-12. |
Top of Notices
Top of Notices March 13, 2012