As I wrote previously, the USPTO has released its proposed rules for the new patent trial proceedings that will be conducted by the Patent Trial and Appeal Board in accordance with the America Invents Act (AIA). The proposed rules will be published in seven separate Federal Register Notices that are due out later this week:

  • Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions—public comments due April 9, 2012
  • Practice Guide for Proposed Trial Rules—public comments due April 9,
  • Changes to Implement Inter Partes Review Proceedings—public comments due April 10, 2012
  • Changes to Implement Post-Grant Review Proceedings—public comments due April 10, 2012
  • Changes to Implement Transitional Program for Covered Business Method Patents—public comments due April 10, 2012
  • Transitional Program for Covered Business Method Patents—Definition of Technological Invention—public comments due April 10, 2012
  • Changes to Implement Derivation Proceedings—public comments due April 10, 2012

Several of my colleagues at Foley & Lardner LLP and I spent the day reviewing the proposed rules and preparing a Legal News Alert that outlines some of the key provisions in these rules packages. Here, I note a few of my first impressions.

Rules of Practice for Trials before the Patent Trial and Appeal Board

This rules package reminds me of the “Standing Order” that governs current Interference proceedings. It covers small procedural details (font size, margins, page limits) as well as more substantive matters (discovery, testimony, estoppel).

Changes to Implement Inter Partes Review and Post Grant Review Proceedings

Many of the provisions in these rules packages are the same for both types of proceedings. The proposed rules outline short time periods for taking action (necessary in view of the statutory 12 month period to complete a proceeding) and appear to provide the patent owner with only one opportunity to amend the patent claims.  The rules provide that if there are concurrent USPTO proceedings involving the same patent, the Board may stay, transfer, consolidate, or terminate any of the proceedings.

Changes to Implement Transitional Program for Covered Business Method Patents

It is interesting that the USPTO issued two separate proposed rules packages relating to “Covered Business Method Patents,” one relating to the institution of the post grant review proceedings and one relating to the definition of “technological invention.” In the main rules package, “covered business method patent” is defined as “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.” The definition rules package indicates that whether a patent is directed to a “technological invention” will be determined “on a case-by-case basis” in view of “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 “Covered Business Method Patents” rules invoke the Post Grant Review rules for most of the procedural requirements.

Changes to Implement Derivation Proceedings

The proposed rules embody several substantive requirements for a derivation case. The derivation petitioner (the asserted “true” inventor) must have a pending U.S. patent application with at least one claim that is both (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. Additionally, the derivation petitioner must submit an affidavit showing (i) communication of the derived invention from the petitioner to the respondent and (ii) lack of the petitioner’s authorization for the respondent’s patent application filing. The proposed rules do not address the director’s authority to defer action until a relevant patent is granted (new 35 USC § 135(c)), or the director’s authority to correct inventorship pursuant to a determination of derivation (new 35 USC § 135(b)).

The Comment Clock is Ticking

As noted above, the deadline for submitting written comments on these proposed rules expires April 9 or 10, 2012. This may seem like a long way off until you realize that there are fewer than four weeks left to submit written comments on the proposed rules relating to preissuance submissions, miscellaneous post patent provisions, and changes to the inventor’s oath/declaration requirement.