August 13, 2012

Press Release, 12-50

USPTO Publishes Final Rules for Administrative Trials Under America Invents Act

Inter Partes Review, Post-Grant Review, and Covered Business Method Patents Addressed

Washington - The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that it will publish final rules in the Federal Register on August 14, 2012, to implement three administrative trial provisions of the Leahy-Smith America Invents Act (AIA); inter partes review, post-grant review, and the transitional program for covered business method patents. The administrative trial final rules offer a third party a timely, cost-effective alternative to district court litigation for challenging the patentability of a claimed invention in an issued patent. These rules become effective on September 16, 2012. With this publication, all of the administrative trial rules the USPTO was tasked by the AIA to complete will have been published.

The final rules for inter partes review and the transitional program for covered business method patents apply to any patent issued before, on, or after the September 16, 2012 effective date. By contrast, the post-grant review final rules apply to patents issuing from applications subject to the first-inventor-to-file provision of the AIA, which does not become effective until March 16, 2013. 

More specifically, the Office is publishing four separate notices in the Federal Register for the administrative trial final rules. The first notice sets forth general procedures common to the three different types of administrative trials, such as for evidentiary standards, discovery standards, sanctions for abuse of discovery, and motions to seal and protective orders. 

The second notice sets forth specifics for the three different trial proceedings, including: (1) the requirements for a petition to institute the particular type of review; (2) the standards for showing sufficient grounds to institute the particular review; (3) the standards for instituting the particular review; (4) the procedures for conducting the particular review that permits a patent owner response, a submission of written comments, and an oral hearing; (5) the standards and procedures for discovery and for the patent owner to move to amend the patent; and (6) the time periods for completing the review. 

The third notice sets forth definitions for the terms “covered business method patent” and “technological invention” that the Board will use in conducting transitional covered business method patent review proceedings. 

The final notice presents a practice guide for the administrative trial final rules to advise the public on the general framework of the regulations, including the structure and times for taking action in each of the new proceedings.

The USPTO issued proposed rules for the administrative trial provisions of the AIA in February 2012. After carefully analyzing public comments to the proposed rules, the agency made modifications to provide clarity and to balance the interests of the public, patent owners, patent challengers, and other interested parties. The Office did so in light of the statutory requirements and considerations, such as 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 complete the proceedings timely. 

“The final rules implementing provisions for inter partes review, post grant review, and the transitional program for covered business method patents in the America Invents Act establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “Moreover, the rules are designed to ensure the integrity of the trial procedures.”

The USPTO plans to discuss the final rules for the new administrative trials at a series of “roadshows” scheduled for September 2012 in Alexandria, Va., Atlanta, Denver, Detroit, Houston, Los Angeles, Minneapolis, and New York. Further information about the specific rules for post grant, inter partes, and the transitional program for covered business method reviews may be found at http://www.uspto.gov/aia_implementation/specific_trial_rules.pdf. Further information about the general trial rules for the three new proceedings may be found at http://www.uspto.gov/aia_implementation/general_trial_rules.pdf. Further information about the definition for “covered business method” and “technological invention” may be found at http://www.uspto.gov/aia_implementation/covered_business_method_definition.pdf. Further information about the trial practice guide may be found at http://www.uspto.gov/aia_implementation/trial_practice_guide.pdf. Further information about the “roadshows” may be found on the AIA micro-site available at http://www.uspto.gov/aia_implementation/roadshow.jsp.

For non-press inquiries about the administrative trial final rules, contact Michael P. Tierney, Lead Administrative Patent Judge, or Joni Y. Chang, Administrative Patent Judge, by telephone at 571-272-9797.

Stay current with the USPTO’s implementation of the America Invents Act by subscribing to receive e-mail updates. Visit our Subscription Center at www.uspto.gov/subscribe.

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