Scott Daniels | February 13, 2012
The PTO has now published a lengthy set of proposed rules for administering the various post-issuance proceedings created by the America Invents Act (AIA) – supplemental review, inter partes review, post-grant review, covered business method patents, and derivation. If you have time to read just one notice, choose the “Practical Guide for Proposed Trial Rules.” It was issued Thursday and summarizes the procedures to be followed in the latter four inter partes-type proceedings. (Incidentally, acronyms will be important to master: e.g., PO = patent owner, IPR = inter partes review, PGR = post-grant review, CBM = covered business method patents).
The most useful item in the Guide is a time line for a typical proceeding.
A proceeding begins when a party files a petition challenging a patent. The patent owner has a two-month period in which to oppose the petition. Because of the strict time limits and limited opportunity to rebut allegations that the claims are unpatentable, we recommend that the patent owner file such an opposition to the petition – this recommendation contrasts with current ex parte and inter partes reexamination practice in which patentees customarily decline to file such an opposition, preferring to wait for the PTO to determine whether to reject the claims.
Within three months of the patent owner’s opposition or the expiration of the two-month period for filing an opposition, the PTO will decide whether to grant the petition and institute a proceeding. For instance, with a petition for inter partes review, the PTO must decide whether there is a “reasonable likelihood” that the petitioner would succeed in its challenge of at least one of the claims.
If the PTO does institute, it will also issue a scheduling order for the “trial phase” of the proceeding. The word “trial” appears to be a word of art, not intended to identify an actual trial, but rather the phase of the proceeding that follows institution, through to the PTO’s final written decision. There is some flexibility in the scheduling order, but it must provide periods for the patent owner’s response to the decision to institute, a reply by the petitioner to the patent owner’s arguments, and a reply by the patent owner to the petitioner’s reply.
Each of these reply periods includes the opportunity to take discovery. The limits on this discovery are not precisely defined, but include (1) “routine discovery” – i.e., production of exhibits cited in filings or testimony, cross-examination of declarants, and production of information by a party that is inconsistent with arguments made by that party; and (2) “additional discovery” – i.e., discovery indicated by “the interests of justice” in inter partes review and derivation proceedings, or by “good cause” in post-grant review and covered business method patent proceedings. Protective orders will be issued to protect the parties’ confidential business information.
The reply periods also include the possibility of the patent owner amending its claims. Such amendment would not be by right, but possible only if the PTO grants the patent owner’s motion to amend. The range of possible amendments would be narrow, but might vary from patent to patent. A motions practice is anticipated, though not encouraged. Possible motions include those to exclude evidence (applying the Federal Rules of Evidence), to compel, to permit added discovery, etc.
A proceeding concludes with an oral hearing or argument, followed by the PTO’s final written decision, though settlement is possible if it occurs before the PTO’s decision.
Lawyers who are not licensed to practice before the PTO could be admitted pro hac vice, though such admission would not be automatic and could be revoked by the PTO. Electronic filing is essentially mandatory. Ex parte communications between the parties and the PTO are proscribed in a manner similar to judicial proceedings. Parties and lawyers may be sanctioned for improper conduct. And page limits on filings will be enforced, but could be relaxed when necessary to provide for adequate presentation of arguments.
The general flavor of the rules is to narrow the issues and to avoid the type of “scorched earth” litigation that often characterizes District Court and ITC practice. The AIA and the new rules also include “echoes” of interference, District Court and ITC practice. These echoes suggest that the PTO would look to decisions from those forums in applying the AIA and the new rules.