Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents

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, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Final rule.

SUMMARY:

The United States Patent and Trademark Office (Office or USPTO) is revising the rules of practice to implement the provisions of the Leahy-Smith America Invents Act (“AIA”) that create the new

inter partes

review proceeding, post-grant review proceeding, and 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 AIA will take effect on September 16, 2012, one year after the date of enactment.

DATES:

Effective Date:

September 16, 2012.

Applicability Dates:

The changes for

inter partes

review proceedings apply to any patent issued before, on, or after September 16, 2012 (subpart B).

The changes for post-grant review proceedings generally apply to patents issuing from applications subject to first-inventor-to-file provisions of the AIA (subpart C). In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interferences commenced before September 16, 2012, to be dismissed without prejudice to the filing of a petition for post-grant review. See 42.200(d) and § 6(f)((3)(A) of the AIA.

The changes for transitional program for covered business method patents apply to any covered business method patent issued before, on, or after September 16, 2012 (subpart D).

FOR FURTHER INFORMATION CONTACT:

Michael P. Tierney, Lead Administrative Patent Judge, Sally G. Lane, Administrative Patent Judge, Sally C. Medley, Administrative Patent Judge, Robert A. Clarke, Administrative Patent Judge, and Joni Y. Chang, Administrative Patent Judge, Board of Patent Appeals and Interferences, by telephone at (571) 272-9797.

SUPPLEMENTARY INFORMATION:

Executive Summary: Purpose:

On September 16, 2011, the AIA was enacted into law (Pub. L. 112-29, 125 Stat. 284 (2011)). The purpose of the AIA and this final rule 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

inter partes

review proceedings, post-grant review proceedings, and transitional post-grant review proceedings for covered business method patents. The USPTO is engaged in a transparent process to create a timely, cost-effective alternative to litigation. Moreover, the rules are 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). This final rule would provide a set of rules relating to Board trial practice for

inter partes

review proceedings, post-grant review proceedings, and transitional post-grant review proceedings for covered business method patents.

Summary of Major Provisions:

Consistent with section 6 of the AIA, this final rule sets forth for

inter partes

review: (1) The requirements for a petition to institute an

inter partes

review of a patent; (2) the standards for showing of sufficient grounds to institute an

inter partes

review; (3) the standards for instituting an

inter partes

review; (4) the procedures for conducting an

inter partes

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 (subpart B of 37 CFR part 42).

Consistent with section 6 of the AIA, this final rule sets forth for post-grant review: (1) The requirements for a petition to institute a post-grant review of a patent; (2) the standards for showing of sufficient grounds to institute a post-grant review; (3) the standards for instituting a post-grant review; (4) the procedures for conducting a post-grant 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 (subpart C of 37 CFR part 42).

Consistent with sections 6 and 18 of the AIA, this final rule further sets forth for transitional post-grant review of covered business method patents: (1) The requirements for a petition to institute a post-grant review of a covered business method patent; (2) the standards for showing of sufficient grounds to institute a post-grant review of a covered business method patent; (3) the standards for instituting a post-grant review of a covered business method patent; (4) the procedures for conducting a post-grant 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 (subpart D of 37 CFR part 42).

Costs and Benefits:

This rulemaking is not economically significant, but is significant, under Executive Order 12866 (Sept. 30, 1993), as amended by Executive Order 13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007).

Background:

To implement sections 6 and 18 of the AIA, the Office published the following notices of proposed rulemaking: (1)

Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions,

77 FR 6879 (Feb. 9, 2012), to provide a consolidated set of rules relating to Board trial practice for

inter partes

review, post-grant review, derivation proceedings, the transitional program for covered business method patents, and judicial review of Board decisions by adding new parts 42 and 90 including a new subpart A to title 37 of the Code of Federal Regulations (RIN 0651-AC70); (2)

Changes to Implement Inter Partes Review Proceedings,

77 FR 7041 (Feb. 10, 2012), to provide rules specific to

inter partes

review by adding a new subpart B to 37 CFR part 42 (RIN 0651-AC71); (3)

Changes to Implement Post-Grant Review Proceedings,

77 FR 7060 (Feb. 10, 2012), to provide rules specific to post-grant review by adding a new subpart C to 37 CFR part 42 (RIN 0651-AC72); (4)

Changes to Implement Transitional Program for Covered Business Method Patents,

77 FR 7080 (Feb. 10, 2012), to provide rules specific to the transitional program for covered business method patents by adding a new subpart D to 37 CFR part 42 (RIN 0651-AC73); (5)

Transitional Program for Covered Business Method Patents—Definition of Technological Invention,

77 FR 7095 (Feb. 10, 2012), to add a new rule that sets forth the definition of technological invention for determining whether a patent is for a technological invention solely for purposes of the transitional program for covered business method patents (RIN 0651-AC75); and (6)

Changes to Implement Derivation Proceedings,

77 FR 7028

(Feb. 10, 2012), to provide rules specific to derivation proceedings by adding a new subpart E to 37 CFR part 42 (RIN 0651-AC74).

This final rule adopts the proposed rules, with modifications, set forth in the three notices of proposed rulemaking:

Inter partes

review proceedings (77 FR 7041), post-grant review proceedings (77 FR 7060), and transitional post-grant review proceedings for covered business method patents (77 FR 7080), except for definitions of the terms “covered business method patent” and “technological invention” which are set forth in a separate final rule (RIN 0651-AC75). The definition of the term “technological invention” was proposed in another notice of proposed rulemaking (77 FR 7095).

In a separate final rule, the Office adopts the proposed rules, with modifications, set forth in

Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions,

77 FR 6879 (Feb. 9, 2012), to 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, and judicial review of Board decisions by adding new parts 42 and 90 including a new subpart A to title 37 of the Code of Federal Regulations (RIN 0651-AC70).

In a third final rule, the Office adopts the proposed definitions of a “covered business method patent” and “technological invention” set forth in the following notices of proposed rulemaking:

Changes to Implement Transitional Program for Covered Business Method Patents,

77 FR 7080 (Feb. 10, 2012); and

Transitional Program for Covered Business Method Patents—Definition of Technological Invention,

77 FR 7095 (Feb. 10, 2012).

Additionally, the Office published a Patent Trial Practice Guide for the proposed rules in the

Federal Register

to provide the public an opportunity to comment.

Practice Guide for Proposed Trial Rules,

77 FR 6868 (Feb. 9, 2012) (Request for Comments) (hereafter “

Practice Guide for Proposed Trial Rules

” or “Office Patent Trial Practice Guide”). The Office envisions publishing a revised Patent Trial Practice Guide for the final rules. The Office also hosted a series of public educational roadshows, across the country, regarding the proposed rules for the implementation of the AIA.

In response to the notices of proposed rulemaking and the Practice Guide notice, the Office received 251 submissions of written comments from intellectual property organizations, businesses, law firms, patent practitioners, and others, including a United States senator who was a principal author of section 18 of the AIA. The comments provided support for, opposition to, and diverse recommendations on the proposed rules. The Office appreciates the thoughtful comments, and has considered and analyzed the comments thoroughly. The Office's responses to the comments are provided in the 124 separate responses based on the topics raised in the 251 comments in the Response to Comments section

infra.

In light of the comments, the Office has made modifications to the proposed rules to provide clarity and to balance the interests of the public, patent owners, patent challengers, and other interested parties, 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.

Differences between the Final Rule and the Proposed Rule

The major differences between the rules as adopted in this final rule and the proposed rules include:

The final rule clarifies that the one-year period for completing an

inter partes

or post-grant review may be adjusted by the Board in the case of joinder (§§ 42.100(c) and 42.200(c)).

The final rule clarifies that a petitioner must certify that it is not estopped from requesting an

inter partes

or post-grant review for the challenged claims, as opposed to the patent (§§ 42.104(a) and 42.204(a)).

The final rule eliminates the requirement that the petitioner must contact the Board to discuss alternate modes of service when the petitioner cannot effect service of the petition for

inter partes,

post-grant and covered business method patent reviews (§§ 42.105(b) and 42.205(b)). Instead, the final rule further clarifies that (1) upon agreement of the parties, service may be made electronically, (2) personal service is not required, and (3) service may be by EXPRESS MAIL® or by means at least as fast and reliable as EXPRESS MAIL® (§§ 42.105(b) and 42.205(b)).

The time period for filing a patent owner preliminary response for

inter partes,

post-grant and covered business method patent reviews is extended from two months to three months (§§ 42.107(b) and 42.207(b)). Likewise, the default time period for filing a patent owner response is extended from two months to three months (§§ 42.120(b) and 42.220(b)).

With respect to motions to amend challenged claims, the final rule clarifies that a patent owner may file one motion to amend but only after conferring with the Board, and it must be filed no later than the filing of a patent owner response for

inter partes,

post-grant and covered business method patent reviews (§§ 42.121(a) and 42.221(a)). The final rule provides that an additional motion to amend may be authorized during

inter partes,

post-grant and covered business method patent reviews when there is a good cause showing or a settlement (§§ 42.121(c) and 42.221(c)). In addition, the final rule clarifies that a reasonable number of substitute claims is presumed to be one substitute claim per challenged claim, which may be rebutted by a demonstration of need. The final rule further clarifies that a motion to amend may be denied where: (1) The amendment does not respond to a ground of unpatentability, or (2) the amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter (§§ 42.121(a) and 42.221(a)). The final rule also clarifies that an additional motion to amend may be authorized when there is a good cause showing or a joint request of the petitioner and the patent owner to materially advance a settlement (§§ 42.121(c) and 42.221(c)). Moreover, the final rule provides that in determining whether to authorize such an additional motion to amend, the Board will consider whether a petitioner has submitted supplemental information after the time period set for filing a motion to amend in § 42.121(a)(1) or 42.221(a)(1).

For joinder, the final rule clarifies that a joinder may be requested by a patent owner or petitioner during

inter partes,

post-grant or covered business method patent reviews, but provides that such a request must be filed, as a motion, no later than one month after institution of any review for which joinder is requested (§§ 42.122(b) and 42.222(b)). With respect to

inter partes

reviews, the time period set forth in § 42.101(b) does not apply when the petition is accompanied by a request for joinder (§ 42.122).

As to filing a supplemental information during

inter partes,

post-grant and covered business method patent reviews, the final rule clarifies that a request for the authorization to file a motion to submit supplement information is made within one month of the date the trial is instituted, and the information must be relevant to a claim

for which the trial has been instituted (§§ 42.123(a) and 42.223(a)). A petitioner who seeks to submit late information, or information that is not relevant to a claim under review, will be required to show why the information reasonably could not have been earlier obtained, and that consideration of the information would be in the interests-of-justice (§§ 42.123(b)-(c), 42.223(b)-(c)).

For covered business method patent reviews, the final rule defines the term “charged with infringement” to mean “a real and substantial controversy regarding infringement of a covered business method patent such that the petitioner would have standing to bring a declaratory judgment action in Federal court” (§ 42.302(a)). In addition, the final rule clarifies that a petitioner may challenge a claim based on the specific statutory grounds permitted under 35 U.S.C. 282(b)(2) or (3), except as modified by section 18(a)(1)(C) of the AIA (§ 42.304(b)).

Discussion of Relevant Provisions of the AIA

Inter Partes

Review

Section 6 of the AIA is entitled “POST-GRANT REVIEW PROCEEDINGS” (Pub. L. 112-29, 125 Stat. 284, 299-305 (2011)). Section 6(a) of the AIA, 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 AIA amends 35 U.S.C. 311-318 and adds 35 U.S.C. 319.

Section 6(a) of the AIA amends 35 U.S.C. 311, entitled “Inter partes review.” 35 U.S.C. 311(a), as amended, provides 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. As amended, 35 U.S.C. 311(a) also provides 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, provides 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. As amended, 35 U.S.C. 311(c) provides 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 AIA amends 35 U.S.C. 312, entitled “Petitions.” 35 U.S.C. 312(a), as amended, provides 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), as amended, to the patent owner or, if applicable, the designated representative of the patent owner. 35 U.S.C. 312(b), as amended, provides 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 AIA amends 35 U.S.C. 313, entitled “Preliminary response to petition.” 35 U.S.C. 313, as amended, provides 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 AIA amends 35 U.S.C. 314, entitled “Institution of inter partes review.” 35 U.S.C. 314(a), as amended, provides 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, 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. 35 U.S.C. 314(b), as amended, provides 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, provides that the Director will notify the petitioner and patent owner, in writing, of the Director's determination under 35 U.S.C. 314(a), as amended, and make the notice available to the public as soon as is practicable. 35 U.S.C. 314(c), as amended, also provides that the notice will include the date on which the review will commence. 35 U.S.C. 314(d), as amended, provides that the determination by the Director whether to institute an

inter partes

review under 35 U.S.C. 314, as amended, will be final and nonappealable.

Section 6(a) of the AIA amends 35 U.S.C. 315, entitled “Relation to other proceedings or actions.” As amended, 35 U.S.C. 315(a)(1) provides 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 had filed a civil action challenging the validity of a claim of the patent. As amended, 35 U.S.C. 315(a)(2) provides 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, provides 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.

As amended, 35 U.S.C. 315(b) provides 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, does not apply to a request for joinder under 35 U.S.C. 315(c), as amended.

As amended, 35 U.S.C. 315(c) provides 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, as amended, that the Director, after receiving a preliminary response under 35 U.S.C. 313, as amended, or the expiration of the time for filing such a response, determines that the petition warrants the institution of an

inter partes

review under 35 U.S.C. 314, as amended.

As amended, 35 U.S.C. 315(d) provides 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.

As amended, 35 U.S.C. 315(e)(1) provides 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), as amended, 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, provides 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 United States International Trade Commission if that

inter partes

review results in a final written decision under 35 U.S.C. 318(a), as amended.

Section 6(a) of the AIA amends 35 U.S.C. 316, entitled “Conduct of inter partes review.” As amended, 35 U.S.C. 316(a) provides 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), as amended; (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 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 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.

As amended, 35 U.S.C. 316(b) provides that in prescribing regulations under 35 U.S.C. 316, as amended, 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 the proceedings instituted under chapter 31 of title 35, United States Code timely.

As amended, 35 U.S.C. 316(c) provides 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 States Code.

As amended, 35 U.S.C. 316(d)(1) provides 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. As amended, 35 U.S.C. 316(d)(2) provides that additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to advance materially 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, provides that an amendment under 35 U.S.C. 316(d), as amended, may not enlarge the scope of the claims of the patent or introduce new matter.

As amended, 35 U.S.C. 316(e) provides 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 AIA amends 35 U.S.C. 317, entitled “Settlement.” 35 U.S.C. 317(a), as amended, provides 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, also provides that if the

inter partes

review is terminated with respect to a petitioner under 35 U.S.C. 317, as amended, 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. As amended, 35 U.S.C. 317(a) further provides 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), as amended.

As amended, 35 U.S.C. 317(b) provides 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, as amended, 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. As amended, 35 U.S.C. 317(b) also provides 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 AIA amends 35 U.S.C. 318, entitled “Decision of the Board.” As amended, 35 U.S.C. 318(a) provides 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), as amended. As amended, 35 U.S.C. 318(b) provides that if the Patent Trial and Appeal Board issues a final written decision under 35 U.S.C. 318(a), as amended, 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. As amended, 35 U.S.C. 318(c) provides 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 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), as amended. As amended, 35 U.S.C. 318(d) provides 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), as amended, for each

inter partes

review.

Section 6(a) of the AIA adds 35 U.S.C. 319, entitled “Appeal.” 35 U.S.C. 319 provides 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 also provides that any party to the

inter partes

review will have the right to be a party to the appeal.

Section 6(c) of the AIA is entitled “REGULATIONS AND EFFECTIVE DATE.” Section 6(c)(1) of the AIA provides that the Director will, not later than the date that is one year after the date of the enactment of the AIA, issue regulations to carry out chapter 31 of title 35, United States Code, as amended by section 6(a) of the AIA.

Section 6(c)(2)(A) of the AIA provides that the amendments made by section 6(a) of the AIA will take effect upon the expiration of the one-year period beginning on the date of the enactment of the AIA, and will apply to any patent issued before, on, or after that effective date.

Section 6(c)(2)(B) of the AIA 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 AIA 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 AIA.

Section 6(c)(3) of the AIA provides a transition provision for the granting, conduct, and termination of

inter partes

reexaminations on or after the effective date of the AIA. 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).

Post-Grant Review

Post-grant review may be sought in more circumstances than

inter partes

review. The grounds for seeking post-grant review include any ground that could be raised under 35 U.S.C. 282(b)(2) or (3), except as modified by section 18(a)(1)(C) of the AIA. 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 AIA is entitled “POST-GRANT REVIEW PROCEEDINGS.” Section 6(d) of the AIA, 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. Pub. L. 112-29, 125 Stat. 284, 305-311 (2011).

Section 6(d) of the AIA adds 35 U.S.C. 321, entitled “Post-grant review.” 35 U.S.C. 321(a) provides 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) also provides 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) provides 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) provides 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 AIA adds 35 U.S.C. 322, entitled “Petitions.” 35 U.S.C. 322(a) provides 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) provides 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 AIA adds 35 U.S.C. 323, entitled “Preliminary response to petition.” 35 U.S.C. 323 provides 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 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 AIA adds 35 U.S.C. 324, entitled “Institution of post-grant review.” 35 U.S.C. 324(a) provides 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) 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. 35 U.S.C. 324(c) provides 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) 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) also provides that such notice will include the date on which the review will commence. 35 U.S.C. 324(e) provides 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 AIA adds 35 U.S.C. 325, entitled “Relation to other proceedings or actions.” 35 U.S.C. 325(a)(1) provides 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) provides 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) provides 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) provides 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) provides 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) provides 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) also provides 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 take into account whether the same or substantially the same prior art or arguments previously were presented to the Office and reject the petition on that basis.

35 U.S.C. 325(e)(1) provides 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) provides 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 United States 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) provides 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 AIA adds 35 U.S.C. 326, entitled “Conduct of post-grant review.” 35 U.S.C. 326(a) provides 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) provides that in prescribing regulations under 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) provides 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) provides 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 advance materially 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) provides 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) provides 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 AIA adds 35 U.S.C. 327, entitled “Settlement.” 35 U.S.C. 327(a) provides 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) also provides 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) further provides 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) provides 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) also provides 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 AIA adds 35 U.S.C. 328, entitled “Decision of the Board.” 35 U.S.C. 328(a) provides 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) provides 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) provides that any proposed amended or new 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) provides 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 AIA adds 35 U.S.C. 329, entitled “Appeal.” 35 U.S.C. 329 provides 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 also provides that any party to the post-grant review will have the right to be a party to the appeal.

Section 6(f) of the AIA is entitled “REGULATIONS AND EFFECTIVE

DATE.” Section 6(f)(1) of the AIA provides that the Director will, not later than the date that is one year after the date of the enactment of the AIA, issue regulations to carry out chapter 32 of title 35, United States Code, as added by section 6(d) of the AIA.

Section 6(f)(2)(A) of the AIA provides that the amendments made by section 6(d) of the AIA will take effect upon the expiration of the one-year period beginning on the date of the enactment of the AIA and, except as provided in section 18 of the AIA and in section 6(f)(3) of the AIA, will apply only to patents described in section 3(n)(1) of the AIA. Section 3(n) of the AIA is entitled “EFFECTIVE DATE.” Section 3(n)(1) of the AIA 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 AIA 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 section 6(d) of the AIA are in effect.

Section 6(f)(3) of the AIA is entitled “PENDING INTERFERENCES.” Section 6(f)(3)(A) of the AIA provides that the Director will determine, and include in the regulations issued under section 6(f)(1) of the AIA, the procedures under which an interference commenced before the effective date set forth in section 6(f)(2)(A) of the AIA 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 AIA had not been enacted.

Section 6(f)(3)(B) of the AIA provides that, for purposes of an interference that is commenced before the effective date set forth in section 6(f)(2)(A) of the AIA, 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 AIA provides that the authorization to appeal or have remedy from derivation proceedings in sections 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 section 6(f)(2)(A) of the AIA and that is not dismissed pursuant to this paragraph.

Transitional Program for Covered Business Method Patents

Section 18 of the AIA provides that the Director will promulgate regulations establishing and implementing a transitional program for the review of covered business method patents. Section 18(a)(1) of the AIA provides that the transitional proceeding will be regarded as a post-grant review under chapter 32 of title 35 United States Code and will employ the standards and procedures as a post-grant review, 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), except as modified by section 18(a)(1)(C) of the AIA (

see

35 U.S.C. 321(b)). Additionally, the determination by the Director of 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 AIA 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 AIA 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 AIA 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 that 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 AIA 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 AIA 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 AIA 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 AIA and the regulations issued under section 18 are repealed on September 16, 2020. Section 18 of the AIA 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

Title 37 of the Code of Federal Regulations (CFR), Chapter I, part 42, Subparts B, C, and D are added as follows:

Subpart B—

Inter Partes

Review

Section 42.100:

Section 42.100 sets forth policy considerations for

inter partes

review proceedings.

Section 42.100(a) provides 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.

Section 42.100(b) provides that a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification in which it appears. This rule is consistent with the provisions of 35 U.S.C. 316, as amended, which provides for the promulgation of rules, including rules establishing and governing the proceeding and the relationship of the proceeding to other proceedings, the standards for instituting the proceeding, and standards and procedures for allowing a patent owner to amend the patent, as well as 35 U.S.C. 318, as amended, which provides that the Board will enter a final written decision on patentability. This rule is also 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—which exists in these proceedings (§ 42.121)—distinguishes Office proceedings from district court proceedings and justifies the broadest reasonable interpretation standard for claim interpretation.

Yamamoto,

740 F.2d at 1572.

Section 42.100(c) provides a one-year time frame for administering the proceeding after institution, with up to a six-month extension for good cause. The one-year period may be adjusted by the Board in the case of joinder. This rule is consistent with 35 U.S.C. 316(a)(11), as amended.

Section 42.101:

Section 42.101 provides who may file a petition for

inter partes

review.

Section 42.101(a) provides 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 rule follows the statutory language of 35 U.S.C. 315(a), as amended, which provides that

inter partes

reviews are barred by prior filing of such a civil action.

Section 42.101(b) provides 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 rule follows the statutory language of 35 U.S.C. 315(b), as amended, which provides a one-year time limit after date of service of complaint.

Section 42.101(c) provides 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 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 patent review, or

inter partes

review.

Section 42.102:

Section 42.102 provides a timeliness requirement for filing an

inter partes

review petition.

Section 42.102(a) provides 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 would be considered timely.

Section 42.102(b) provides 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 rule is consistent with section 6(c)(2)(B) of the AIA, which provides for graduated implementation of

inter partes

reviews. The Office, however, does not expect to limit the number of petitions for

inter partes

review at this time.

Section 42.103:

Section 42.103 sets forth the fee requirement for filing an

inter partes

review petition.

Section 42.103(a) provides that a fee under § 42.15(a) must accompany a petition for

inter partes

review.

Section 42.103(b) provides that that no filing date will be accorded until full payment is received. This rule is consistent with 35 U.S.C. 312(a)(1), as amended, 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 42.104:

Section 42.104 provides for the content of petitions to institute an

inter partes

review. The 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.

Section 42.104(a) provides 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 challenging the patent claims. This requirement is 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 will be a basis for denying the petition without proceeding to the merits of the petition.

Section 42.104(b) requires that the petition identify the precise relief requested for the claims challenged. Specifically, the rule requires 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 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 rule provides an efficient means for identifying the legal and factual basis for satisfying the threshold for instituting

inter partes

review and provides the patent owner with notice as to the basis for the challenge to the claims.

Section 42.104(c) provides that a petitioner seeking to correct clerical or typographical mistakes in a petition could file a motion to correct the mistakes. The rule also provides that the grant of such a motion would not alter the filing date of the petition.

Section 42.105:

Section 42.105 provides petition and exhibit service requirements in addition to the service requirements of § 42.6.

Section 42.105(a) requires 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 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 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.

Section 42.105(b), as adopted in this final rule, provides that upon agreement of the parties, service may be made electronically, and service may be made by EXPRESS MAIL® or by means at least as fast and reliable as EXPRESS MAIL®. Personal service is not required.

Section 42.106:

Section 42.106 provides for the filing date requirements of an

inter partes

review petition.

Section 42.106(a) specifies the 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 rule requires 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).

Section 42.106(b) provides petitioners a one month time frame to correct defective petitions to institute an

inter partes

review. The 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 will review the petitions for procedural compliance. Where a procedural defect is noted,

e.g.,

failure to state the claims being challenged, the Board will notify the petitioner that the petition was incomplete and identify any non-compliance issues.

Section 42.107:

Section 42.107 sets forth the procedure in which the patent owner may file a preliminary response.

Section 42.107(a) provides 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.

Section 42.107(b) provides that the due date for the preliminary response to the petition is no later than three months from the date of the notice that the request to institute an

inter partes

review has been granted a filing date. This rule is consistent with 35 U.S.C. 313, as amended, which provides that the Director shall set a time period for filing the patent owner preliminary response.

Under 35 U.S.C. 314(b), as amended, the Board has three months from the filing of the patent owner preliminary 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 patent owner preliminary response well before the date the patent owner preliminary response is due, or file a paper stating that no patent owner preliminary 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.

Section 42.107(c) provides that the patent owner preliminary response is not allowed to present new testimony evidence, for example, expert witness testimony on patentability. 35 U.S.C. 313, as amended, provides that a patent owner preliminary response set 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 patent owner preliminary response and the rule reflects this distinction. In certain instances, however, a patent owner may be granted additional discovery before filing its 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.

Section 42.107(d) provides that the patent owner preliminary response cannot include any amendment.

See

§ 42.121 for filing a motion to amend the patent after an

inter partes

review has been instituted.

Section 42.107(e) provides 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 to review disclaimed claims.

Section 42.108:

Section 42.108 provides 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 patent owner preliminary response, 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. Section 42.108 is consistent with this statutory requirement and identifies how the Board may authorize such a review to proceed. In considering whether to authorize the review, the Board may take into account its ability to complete the proceeding timely. 35 U.S.C. 316(b), as amended.

Section 42.108(a) provides 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 may authorize the review to proceed on the challenged claims for which the threshold requirements for the proceeding have been met. The Board will identify the grounds upon which the review will proceed 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.

Section 42.108(b) provides 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. The 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.

Section 42.108(c) provides 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:

Section 42.120 sets forth the procedure in which the patent owner may file a patent owner response.

Section 42.120(a) provides for a patent owner response and is consistent with the requirements of 35 U.S.C. 316(a)(8), as amended.

Section 42.120(b) provides 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 is three months from the date the

inter partes

review was instituted. The Board's experience with patent owner responses is that three months provides a sufficient amount of time to respond in a typical case, especially as the patent owner would already have been provided three months to file a patent owner preliminary response prior to institution of the

inter partes

review. Additionally, the time period for response is consistent with the

requirement that the trial be conducted such that a final written decision is rendered within one year of the institution of the review. 35 U.S.C. 316(a)(11), as amended.

Section 42.121:

Section 42.121 provides standards and procedures for a patent owner to file motions to amend the patent. The rule is consistent with 35 U.S.C. 316(a)(9), as amended, which requires the Office to promulgate rules setting forth the standards and procedures for allowing the patent owner to amend the patent.

Section 42.121(a) makes it clear that the first motion to amend need not be authorized by the Board. The motion will be entered so long as it complies with the timing and procedural requirements. Additional motions to amend will require prior Board authorization. All motions to amend, even if entered, will not result automatically 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 rule aids the efficient administration of the Office and the timely completion of the review under 35 U.S.C. 316(b), as amended.

Section 42.121(a) also provides that a motion to amend the claims may be denied 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. Section 42.121(a) further provides that a reasonable number of substitute claims is presumed to be one substitute claim per challenged claim which may be rebutted by a demonstration of need. The 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. Further, the rule is consistent with 35 U.S.C. 316(a)(9), as amended, which requires the Office to promulgate rules setting forth the standards and procedures for the patent owner to amend the patent.

Section 42.121(b) provides that a motion to amend the claims must include a claim listing, show the changes clearly, and 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.

Under § 42.121(c), 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 or a joint request of the petitioner and the patent owner to materially advance a settlement.

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. In determining whether to authorize such an additional motion to amend, the Board will consider whether a petitioner has submitted supplemental information after the time period set for filing a motion to amend in § 42.121(a)(1). 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 complete the proceeding timely.

Section 42.122:

Section 42.122(a) is 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.

Under § 42.122(b), a patent owner or petitioner may request joinder, but such a request must be filed no later than one month after institution. Further, the time period set forth in § 42.101(b) shall not apply when the petition is accompanied by a request for joinder. This is consistent with the last sentence of 35 U.S.C. 315(b), as amended.

Section 42.123:

Section 42.123 provides for the filing of supplemental information. 35 U.S.C. 316(a)(3), as amended, provides that the Director will issue 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, as amended, 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 rule provides that motions identifying supplemental information be filed after the institution of the

inter partes

review.

Subpart C—Post-Grant Review

Section 42.200:

Section 42.200 sets forth policy considerations for post-grant review proceedings.

Section 42.200(a) provides that a post-grant review is a trial and subject to the rules set forth in subpart A of title 42, Code of Federal Regulations.

Section 42.200(b) provides that a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification in which it appears. This rule is consistent with 35 U.S.C. 326, which provides for the promulgation of rules, including rules establishing and governing the proceeding and the relationship of the proceeding to other proceedings, the standards for instituting the proceeding, and standards and procedures for allowing a patent owner to amend the patent, as well as 35 U.S.C. 328, which provides that the Board will enter a final written decision on patentability. This rule is also 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—which exists in these proceedings (§ 42.221)—distinguishes Office proceedings from district court proceedings and justifies the broadest reasonable interpretation standard for claim interpretation.

Yamamoto,

740 F.2d at 1572.

Section 42.200(c) provides a one-year timeframe for administering the proceeding after institution, with up to a six-month extension for good cause. The one-year period may be adjusted by the Board in the case of joinder. This rule is consistent with 35 U.S.C. 326(a)(11).

Section 42.200(d) provides that interferences commenced within one year of enactment of the AIA 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 rule is consistent with section 6(f)(3) of the AIA, 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:

Section 42.201 provides who may file a petition for post-grant review.

Section 42.201(a) provides 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 rule follows the statutory language of 35 U.S.C. 325(a)(1), which provides that post-grant reviews are barred by prior civil action.

Section 42.201(b) provides 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 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 patent review, or

inter partes

review.

Section 42.202:

Section 42.202 sets forth the timeliness requirement for filing a post-grant review petition.

Section 42.202(a) provides 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. Section 42.202(a) also provides 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 rule is consistent with the requirements of 35 U.S.C. 321(c).

Section 42.202(b) provides that the Director may limit the number of post-grant reviews that may be instituted during each of the first four one-year periods after post-grant review takes effect. This rule is consistent with section 6(f)(2)(B) of the AIA, 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:

Section 42.203 provides 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 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:

Section 42.204 provides for the content of petitions to institute a post-grant review. The 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.

Section 42.204(a) provides 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 challenging the patent claims. This requirement is 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 will be a basis for denying the petition without proceeding to the merits of the petition.

Section 42.204(b) requires that the petition identify the precise relief requested for the claims challenged. Specifically, the rule requires 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 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 rule provides an efficient means for identifying the legal and factual basis satisfying the threshold for instituting a proceeding and provides the patent owner with a minimum level of notice as to the basis for the challenge to the claims.

Section 42.204(c) provides that a petitioner seeking to correct clerical or typographical mistakes in a petition could file a procedural motion to correct the mistakes. The rule also provides that the grant of such a motion would not alter the filing date of the petition.

Section 42.205:

Section 42.205 provides petition and exhibit service requirements in addition to the service requirements of § 42.6.

Section 42.205(a) requires 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 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.

Section 42.205(b), as adopted in this final rule, provides that upon agreement of the parties, service may be made electronically, and service may be made by EXPRESS MAIL® or by means at least as fast and reliable as EXPRESS MAIL®. Personal service is not required.

Section 42.206:

Section 42.206 provides for the filing date requirements of a post-grant review petition.

Section 42.206(a) sets 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 when the petition is accompanied by the fee established by the Director. Consistent with the statute, the rule requires that a complete petition be filed along with the fee and that it be served upon the patent owner.

Section 42.206(b) provides 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 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 will review a petition for procedural compliance. Where a procedural defect is noted,

e.g.,

failure to state the claims being challenged, the Board will notify the petitioner that the petition was incomplete and identify any non-compliance issues.

Section 42.207:

Section 42.207(a) provides 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.

Section 42.207(b) provides that the due date for the preliminary response to petition is no later than three months from the date of the notice that the request to institute a post-grant review has been granted a filing date. This rule is consistent with 35 U.S.C. 323, which provides that the Director shall set a time period for filing the patent owner preliminary response.

Within three months from the filing of the patent owner preliminary response, or three months from the date such a response was due, the Board will 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, or file 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.

Section 42.207(c) provides that the patent owner preliminary response may not present new testimony evidence, for example, expert witness testimony on patentability. 35 U.S.C. 323 provides that a patent owner preliminary 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 the presentation of evidence as a matter of right in the form of testimony in support of a patent owner preliminary response, and the proposed rule reflects this distinction. In certain instances, however, a patent owner may be granted additional discovery before filing its preliminary response and may submit any testimonial evidence obtained through the discovery. For example, additional discovery may be authorized where the patent owner raises sufficient concerns regarding the petitioner's certification of standing.

Although 35 U.S.C. 324 does not require that a patent owner preliminary response be considered, the Board expects to consider such responses in all but exceptional cases.

Section 42.207(d) provides that the patent owner preliminary response cannot include any amendment.

See

§ 42.221 for filing a motion to amend the patent after a post-grant review has been instituted.

Section 42.207(e) provides 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 to review disclaimed claims.

Section 42.208:

Section 42.208 provides 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 not rebutted, demonstrates that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. Alternatively, the Director may institute a post-grant review by showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications. Section 42.208 is consistent with this statutory requirement and identifies how the Board may authorize such a review to proceed. In considering whether to authorize the review, the Board may take into account its ability to complete the proceeding timely. 35 U.S.C. 326(b).

Section 42.208(a) provides 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 may authorize the review to proceed on the challenged claims for which the threshold requirements for the proceeding have been met. The Board may 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.

Section 42.208(b) provides 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 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).

Section 42.208(c) provides that the institution may be based on a more likely than not standard and that standard is consistent with the requirements of 35 U.S.C. 324(a).

Section 42.208(d) provides 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 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:

Section 42.220 sets forth the procedure in which the patent owner may file a patent owner response.

Section 42.220(a) provides for a patent owner response and is consistent with the requirements of 35 U.S.C. 326(a)(8).

Section 42.220(b) provides 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 is three months from the date the post-grant review is instituted. The Board's experience with patent owner responses is that three months provides a sufficient amount of time to respond in a typical case, especially as the patent owner would already have been provided three months to file a patent owner preliminary response prior to institution. Additionally, the time period 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:

Section 42.221 provides standards and procedures for a patent owner to file motions to amend the patent. The rule is consistent with 35 U.S.C. 326(a)(9), which requires the Office to promulgate rules setting forth standards and procedures for allowing the patent owner to amend the patent.

Section 42.221(a) makes 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 result automatically 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 abuse of the system. The proposed rule aids in the efficient administration of the Office and the timely completion of the proceeding. 35 U.S.C. 326(b).

Section 42.221(a) also provides that a motion to amend the claims may be denied 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. Section 42.221(a) further provides that a reasonable number of substitute claims is presumed to be one substitute claim per challenged claim which may be rebutted by a demonstration of need. The rule aids the efficient administration of the Office and the timely completion of the review under 35 U.S.C. 326(b) and also is consistent with 35 U.S.C. 326(d)(3) which prohibits enlarging the scope of the claims or introducing new matter.

Section 42.221(b) provides that a motion to amend the claims must include a claim listing, show the changes clearly, and 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.

Under § 42.221(c), a patent owner may request the filing of 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 or a joint request of the petitioner and the patent owner to materially advance a settlement.

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. In determining whether to authorize such an additional motion to amend, the Board will consider whether a petitioner has submitted supplemental information after the time period set for filing a motion to amend in § 42.221(a)(1). Similarly, a 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 complete the proceeding timely.

Section 42.222:

Section 42.222 is 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.

Under § 42.222(b), a patent owner or petitioner may request a joinder, but such a request must be filed no later than one month after institution.

Section 42.223:

Section 42.223 provides for the filing of supplemental information. 35 U.S.C. 326(a)(3) provides that the Director shall promulgate 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 rule provides that motions identifying supplemental information be filed after the institution of the post-grant review.

Section 42.224:

Section 42.224 provides 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 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 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 a slightly higher standard 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 considerably more 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).

Subpart D—Transitional Program for Covered Business Method Patents

Section 42.300:

Section 42.300 sets forth policy considerations for covered business method patent review proceedings.

Section 42.300(a) provides 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 section 18(a)(1) of the AIA, 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.

Section 42.300(b) provides that a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification in which it appears. This rule is consistent with the provisions of 35 U.S.C. 326, which provides for the promulgation of rules, including rules establishing and governing the proceeding and the relationship of the proceeding to other proceedings, the standards for instituting the proceeding, and standards and procedures for allowing a patent owner to amend the patent, as well as 35 U.S.C. 328, which provides that the Board will enter a final written decision on patentability. This rule would also 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—which exists in these proceedings (§ 42.221)—distinguishes Office proceedings from district court proceedings and justifies the broadest reasonable interpretation standard for claim interpretation.

Yamamoto,

740 F.2d at 1572.

Section 42.300(c) provides a one-year timeframe for administering the proceeding after institution, with a six-month extension for good cause. The one-year period may be adjusted by the Board in the case of joinder. This rule is consistent with 35 U.S.C. 326(a)(11).

Section 42.300(d) provides 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 section 18(a)(3)(A) of the AIA, 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, and section 18(a)(3)(B) which provides that the rules in effect until before the repeal will govern covered business method patent reviews filed before the date of appeal.

Section 42.302:

Section 42.302 specifies who may file a petition for a covered business method patent review.

Section 42.302(a) provides 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 rule is consistent with section 18(a)(1)(B) of the AIA. Section 42.302(a) also defines the term “charged with infringement” to mean “a real and substantial controversy regarding infringement of a covered business method patent such that the petitioner would have standing to bring a declaratory judgment action in Federal court.”

Section 42.302(b) provides 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 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:

Section 42.303 provides that a petition for a covered business method patent review may be filed at 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). This rule is consistent with section 18(a)(2) of the AIA.

Section 42.304:

Section 42.304 provides for the content of petitions to institute a covered business method patent review. The 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.

Section 42.304(a) provides 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 with explanation that the patent is a covered business method patent and that the petitioner meets the eligibility requirements of § 42.302. This requirement is 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 will be a basis for denying the petition without proceeding to the merits of the decision.

Section 42.304(b) requires that the petition identify the precise relief requested for the claims challenged. Specifically, the rule requires 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 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 rule provides an efficient means for identifying the legal and factual bases 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.

Section 42.304(c) provides that a petitioner seeking to correct clerical or typographical mistakes could file a motion to correct the mistakes. The rule also provides that the grant of such a motion would not alter the filing date of the petition.

Response to Comments

The Office received 251 written submissions of comments from intellectual property organizations, businesses, law firms, patent practitioners, and others. The comments provided support for, opposition to, and diverse recommendations on the proposed rules. The Office appreciates the thoughtful comments, and has considered and analyzed the comments thoroughly. The Office's responses to the comments that are directed to the consolidated set of rules relating to Board trial practice and judicial review of Board decisions are provided in a separate final rule (RIN 0651-AC70), and the Office's responses to the comments that are directed to the definitions of the terms “covered business method patent” and “technological invention” are also provided in another separate final rule (RIN 0651-AC75).

The Office's responses to comments that are directed to

inter partes

review proceedings (77 FR 7041), post-grant review proceedings (77 FR 7060), and transitional post-grant review proceedings for covered business method patents (77 FR 7080) are provided as follows:

Eligibility

Comment 1:

One comment requested clarification on whether an

inter partes

review may be requested for a patent issued from an application filed before November 29, 1999.

Response: Inter partes

review is applicable to a patent issued from an application filed before November 29, 1999.

See

section 6(c)(2)(A) of the AIA.

Who May Petition (§§ 42.101, 42.201)

Comment 2:

Several comments suggested that patent owners should be permitted to petition for

inter partes

review to provide a low cost alternative to small companies seeking to defend their patents.

Response:

This suggestion is not adopted because 35 U.S.C. 311, as amended, requires that the petition in an

inter partes

review be filed by a person who is not the owner of the patent.

Comment 3:

Several comments suggested that the Office should interpret the terms “real parties in interest” and “privies” in a flexible manner consistent with common law principles and Federal case law, and set forth common law definitions in the regulation. One comment was in favor of the proposed rules related to the identification of real party-in-interest and related matters under § 42.8. However, another comment expressed concerns related to the predictability of the Office's case-by-case approach in view of the estoppel effects.

Response:

Because “real party-in-interest” and “privy” disputes involve highly fact-dependent issues, the Office believes that the case-by-case approach is the best way to resolve these disputes. The Board will make the determination based on controlling case law and the particular facts of each case as suggested by several of the comments. The Office Patent Trial Practice Guide provides further discussion to assist parties in identifying “real parties in interest” and “privies.”

Comment 4:

Several comments requested additional guidance regarding the definitions for the terms “real party-in-interest” and “privy.” Some of the

comments requested examples, such as whether a third party who provides financial, legal, and technical assistance will be considered a real party-in-interest or privy.

Response:

The Office Patent Trial Practice Guide provides further discussion to assist parties in identifying “real parties in interest” and “privies.” Since “real party-in-interest” and “privy” issues are highly fact dependent, the Office will also provide more guidance through its opinions and will publish relevant decisions promptly.

Comment 5:

A few comments recommended that the Office should maintain the control-focused approach to non-party estoppel and requested more information regarding control-focused understandings of the terms “real party-in-interest” and “privy.”

Response:

The Office may consider: (1) Whether the non-party exercised, or could have exercised, control over a party's participation in a proceeding, and (2) the degree of that control, in determining whether a party may be recognized as a “real party-in-interest” or “privy.” Furthermore, the Office may consider other relevant factors. The Office Patent Trial Practice Guide provides further discussion to assist in identifying the relevant parties. The Office will also provide more guidance through its opinions, and will publish relevant decisions promptly.

Comment 6:

A few comments suggested that the Office should describe how its practice in making “real party-in-interest” and “privy” determinations will differ from its current approach in

inter partes

reexaminations.

Response:

The Office Patent Trial Practice Guide provides a few examples of relevant petition decisions issued in reexaminations. Since “real party-in-interest” and “privy” determinations are fact dependent, the Office will consider the particular facts of each case and controlling case law.

Comment 7:

A few comments requested clarification on the relevance of Joint Defense Agreements to a “real party-in-interest” or “privy” determination.

Response:

Since “real party-in-interest” and “privy” determinations depend on the particular facts of each case, the Office will decide these issues on a case-by-case basis. As to Joint Defense Agreements, the Office Patent Trial Practice Guide discusses their role in the determination. In short, a party's membership in a Joint Defense Agreement with the petitioner does not, standing alone, make the party a “real party in interest” or “privy” of the petitioner, but the fact is relevant to those inquiries. Of particular relevance is the party's level of participation in, and control over, the requested trial.

Comment 8:

A few comments suggested that the Office should require that challenges to “real party-in-interest” identifications be brought no later than the deadline for filing a patent owner preliminary response in order to provide sufficient time for the Board to decide the challenge before deciding whether to institute a review. Another comment requested clarification that standing may be challenged at any time.

Response:

The Office agrees with the comments that such a challenge should be brought before or with the filing of the patent owner preliminary response. During that period, the patent owner may seek authorization to take pertinent discovery. After the patent owner preliminary response, the likelihood of granting an authorization for additional discovery related to the challenge before institution will decrease because the Board is required to determine whether to institute a review within three months from the filing of the patent owner preliminary response. After institution, standing issues may still be raised during the trial. A patent owner may seek authority from the Board to take pertinent discovery or to file a motion to challenge the petitioner's standing.

Comment 9:

A few comments requested clarification that the burdens of proof and persuasion will be on the patent owner to come forward with objective evidence to support a challenge to the “real party-in-interest” identification. One comment suggested that the Office should require petitioners to update the submissions related to estoppel throughout the pendency of a review proceeding, and disclose any facts relevant to the certification.

Response:

The Office generally will accept the petitioner's “real party-in-interest” identification at the time of filing the petition. Section 42.8(a)(3) requires a party to file an update within 21 days of a change of the “real party-in-interest” identification. The patent owner may provide objective evidence to challenge the identification in a preliminary response, which the Board will consider in determining whether to grant the petition.

Comment 10:

A few comments suggested that the discovery rules should be expanded to permit the patent owner to investigate the petitioner's compliance with the identification of the real party-in-interest.

Response:

Additional discovery may be authorized where a patent owner raises sufficient concerns regarding the petitioner's certification.

Comment 11:

One comment recommended that the estoppel effects should be enforced against the named petitioner and privies of the named petitioner, as well as the actual real parties in interest and its privies.

Response:

Depending on the particular facts of each case, including whether there is any intent of misrepresentation, the Board has the discretion to impose an appropriate sanction against a party for misconduct

e.g.,

a petitioner willfully misleads the Office that it is a proper petitioner for a review of certain claims in a patent when the party knew on filing that they were a privy of a previously unsuccessful petitioner who had sought review of the same claims in the same patent.

See

§ 42.12.

Pendency (§§ 42.100(c) and 42.200(c))

Comment 12:

One comment opposed any policy that would allow extension of the one-year period whenever a petition possesses certain indicia of complexity,

e.g.,

when the petition involves an obviousness challenge, and urged the Office to remain firm in its commitment to complete proceedings within the one-year period, with only rare use of the six-month extension.

Response:

The rules require final determinations to be issued in both post-grant and

inter partes

review within the one-year period. §§ 42.100(c) and 42.200(c). Extensions of the one-year period are anticipated to be rare.

Comment 13:

Several comments supported a high threshold for granting an extension of the one-year period and asked for guidance as to what would constitute good cause to extend the one-year period.

Response:

Extensions of the one-year period are anticipated to be rare. §§ 42.100(c) and 42.200(c). Whether good cause is shown will depend on the particular facts of a given case and cannot be articulated with certainty in the abstract. One example may be where, through no fault of either party, new evidence is uncovered late in the proceeding that necessitates a motion to amend the patent.

Comment 14:

Several comments asked for guidance as to the impact of the Board missing the one-year period in post-grant or

inter partes

review; for example whether the Board retains jurisdiction and what recourse is available to the parties.

Response:

As amended, 35 U.S.C. 316(a)(11) and 35 U.S.C. 326(a)(11) require the Director to prescribe regulations requiring that the final determination be issued within one year

(extendable up to six months with good cause). Consistent with these statutory provisions, the Office adopted §§ 42.100(c) and 42.200(c) in this final rule to set forth the one-year time period. The Office does not envision at this time extending any review beyond the time periods set forth in §§ 42.100(c) and 42.200(c).

Comment 15:

Several comments suggested that meeting the one-year period will be difficult where a party is outside the United States and that allowing less time for judicial deliberations should be considered in such instances.

Response:

The rules allow the Board to take into consideration any factor that might affect the ability to meet the one-year period and to adjust the schedule accordingly, including providing less time for judicial deliberations.

Comment 16:

One comment suggested that the Office should confirm in the Office Patent Trial Practice Guide or the rules that “good cause” exists for a six-month extension of the one-year period where a motion to amend is filed after the patent owner's response so that the patent owners cannot “sandbag” the petitioners by holding back substitute claims.

Response:

This suggestion is not adopted because extensions of the one-year period are anticipated to be rare. Whether good cause is shown will depend on the particular facts of a given case. Sections 42.121 and 42.221 require a patent owner to seek authorization for filing a motion to amend claims after a patent owner response, so that the Board will be able to determine proper scheduling for completing the review within the one-year period, and possibly to deny a patent owner's request to file a motion to amend if it comes too late in the proceeding.

Time for Filing Petition (§§ 42.102, 42.202, and 42.303)

Comment 17:

A comment indicated that nine months is a sufficient amount of time for filing a petition for post-grant review.

Response:

Nine months is the time required by statute. 35 U.S.C. 321(c).

Comment 18:

A comment suggested that the statement in the discussion of the notice of proposed rulemaking (77 FR at 7044) indicating that petitions requesting

inter partes

review would be considered timely if filed prior to the institution of a post-grant review is in conflict with the requirement that a petition for

inter partes

review not be filed until nine months after issuance.

Response:

The statute states that a petition for

inter partes

review must be filed after the later of nine months from issuance or the termination of an instituted post-grant review. The statement in the discussion refers to the situation where nine months have passed since issuance, yet no decision on whether to institute a post-grant review has been entered. In such a situation, a party need not wait until a decision on whether the post-grant review will be instituted, but may proceed and file a petition for

inter partes

review.

Comment 19:

Several comments expressed concern about any decision by the Director to limit the number of petitions for

inter partes

or post-grant review.

Response:

Although the AIA authorizes the Director to limit the number of petitions under sections 6(c)(2)(B) and 6(f)(2)(B) of the AIA, as stated previously in the discussion of §§ 42.102(b) and 42.202(b), the Office does not plan to limit the number of petitions at this time.

Comment 20:

One comment suggested that the petition fees should allow the Office to cover the demand that may exist for post-grant proceedings.

Response:

The fees have been set with consideration for the aggregate cost of the proceeding.

See

35 U.S.C. 321(a). At this time the Office expects to be able to provide the resources necessary to avoid limiting the number of petitions.

Comment 21:

Several comments suggested that guidance should be provided for consequences if the Director makes a decision to limit the number of petitions. In particular, the comments requested clarification on whether a petition, filed after the limit is reached, would be afforded any benefit of priority or would be required to be resubmitted.

Response:

At this time, it is not anticipated that a limit on the number of petitions will be imposed. Under §§ 42.102(b) and 42.202(b), a petition that is filed after any established limit would be considered untimely. If a limit were to be imposed, it is expected that the Office would provide sufficient notice and guidance well prior to the imposition of such limit.

Comment 22:

One comment suggested that if a limit on the number of petitions is imposed it should be done on a quarterly basis, noting that having petitions filed after an established limit be deemed untimely arbitrarily harms petitioners based on the timing of their actions and is not statutorily required.

Response:

This suggestion is not adopted. The statutes allow the Director to impose a limit on the number of proceedings that may be instituted on a yearly basis but do not provide for quarterly limits. Sections 6(c)(2)(B) and 6(f)(2)(B) of the AIA. Any petition filed after the Director has established a limit, and that limit has been exceeded, will be untimely because the petition would have been filed beyond a time when the Office is receiving petitions for the year.

Comment 23:

Several comments suggested that the Office should provide a monthly or quarterly count of the number of filed petitions and instituted proceedings and notice prior to and when any limit is reached.

Response:

At this time it is not anticipated that a limit on the number of proceedings instituted will be imposed and therefore, no limit has been established. If a limit is set in the future it is expected that the Office would provide sufficient notice, including periodic reporting of the number of petitions received and proceedings instituted, well prior to the time any limit would be met.

Comment 24:

One comment suggested that the Office accept petitions for covered business method patent review prior to the effective date of the program pursuant to section 18(a)(2) of the AIA, so that the Office can begin immediate consideration of those petitions as of September 16, 2012.

Response:

The suggestion is not adopted. The AIA provides that regulations issued for the transitional covered business method patent program shall take effect one year from the date of the enactment of the Act, as set forth in section 18(a)(2). Consistent with the provision, the regulations for the transitional covered business method patent program will take effect September 16, 2012. At that time, the Office will accept petitions for the program.

Content of Petition (§§ 42.104, 42.204, and 42.304)

Comment 25:

One comment suggested that the Office consider a “more rational and fair” scheme for presenting challenges based on a proposed-rejection-by-proposed-rejection approach allowing the patent owner to challenge the grouping and grounds of a proposed rejection.

Response:

The rules do not prohibit petitioners from grouping claims where the basis for the alleged unpatentability of the grouped claims is the same. When grouping claims, the petitioner must provide sufficient notice as to the merits of the challenge for each claim so challenged.

Comment 26:

One comment suggested that the Office should require proof in the petition sufficient to meet the statutory grounds for unpatentability alleged, including requiring corroboration for “on sale” and “public

use” challenges with an explanation of the grounds and specific citation to supporting evidence.

Response:

This suggestion is adopted in part. The rules require the petition to set forth a full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence. § 41.22(a)(3). In addition, the petition must show how each challenged claim is unpatentable under the statutory ground identified, must specify where each element is found in the prior art, and must provide specific citations to the evidence. §§ 41.104 and 41.204. If corroborating evidence is necessary to show unpatentability of a challenged claim, the evidence must be included with the petition to meet the requirements of the rules.

Comment 27:

One comment suggested that the second sentence of §§ 42.104(b) and 42.204(b) be amended to read “in addition to the precise relief requested, the statement must identify the following.”

Response:

This suggestion is not adopted. Sections 42.104 and 42.204 state that the requirements of paragraph (b) are in addition to the requirements of §§ 42.8, 42.22, and 42.24. “A statement of the precise relief requested” is required by § 42.22(a)(1).

Claim Construction (§§ 42.100(b), 42.200(b), and 42.300(b))

Comment 28:

Several comments suggested that proposed §§ 42.100(b), 42.200(b), and 42.300(b) are substantive rules and appear to exceed the authority of the Office, which does not have substantive rulemaking authority under 35 U.S.C. 2(b)(2). Those comments further stated that the AIA did not amend 35 U.S.C. 2(b)(2) to provide such an authority. However, several other comments were in favor of the proposed rules and recognized that the longstanding, established claim construction standard set forth in the proposed rules is consistent with the AIA and current case law.

Response:

The rules are consistent with the AIA requirements to prescribe regulations that set forth standards and procedures. In any event, the Office believes that it has the statutory authority to prescribe in the regulations a claim construction standard for

inter partes

review, post-grant review, and covered business method patent review proceedings. While the Leahy-Smith America Invents Act requires the Office to establish the procedures for instituting and conducting the reviews, the Leahy-Smith America Invents Act also provides that the Office shall prescribe regulations setting forth certain standards. For instance, the Leahy-Smith America Invents Act amended 35 U.S.C. 316(a)(2) and (a)(4) to provide that the Director shall prescribe regulations setting forth the standards for the showing of sufficient grounds to institute, establish and govern an

inter partes

review, as well as the relationship of the review to other proceedings. 35 U.S.C. 326(a)(2) and (a)(4) provide the same mandate for post-grant review and covered business method patent review. Therefore, the Office, at a minimum, has the authority to prescribe the claim construction standard by which

inter partes

review, post-grant review, and covered business method patent review are instituted.

As to the propriety of the broadest reasonable interpretation standard, its adoption here does not change any substantive rights relative to the current practice. For nearly thirty years, the United States Court of Appeals for the Federal Circuit has continued to require the Office to give patent claims their broadest reasonable construction consistent with the specification in patentability determination proceedings.

See In re Yamamoto,

740 F.2d 1569, 1571 (Fed. Cir. 1984). Even in the situation where the patent claims had been previously construed by the district court using a different standard in an action that involved invalidity and infringement issues, the Office was required to apply the “broadest reasonable interpretation” standard in its own proceedings.

See, e.g.,

In re NTP, Inc.,

654 F.3d 1268, 1274 (Fed. Cir. 2011). Indeed, the Federal Circuit has acknowledged the longstanding practice that the patent system has two claim construction standards, the “broadest reasonable interpretation” standard applied to Office's proceedings, and that used by district courts in actions involving invalidity and infringement issues.

See, e.g.,

Phillips

v.

AWH Corp.,

415 F.3d 1303, 1316 (Fed. Cir. 2005) (

en banc

). The “broadest reasonable interpretation” standard has been well established for nearly thirty years in the judicial precedent for construing patent claims in patentability determination proceedings before the Office.

The provisions of the Leahy-Smith America Invents Act indicate that the typical standard applicable to USPTO proceedings should apply as well to these trial proceedings. The typical justifications for using the “broadest reasonable interpretation standard”—particularly the ability to amend claims, application of the lower “preponderance of the evidence standard” for determining patentability (35 U.S.C. 316(e), as amended, and 35 U.S.C. 326(e), and the absence of a presumption of validity)—are explicitly provided for by the Act, or consistent with it. In contrast, district courts must use the clear and convincing standard, and the patent claims are presumed to be valid in infringement litigation.

Microsoft Corp.

v.

i4i Ltd. P'ship,

131 S. Ct. 2238, 2243 (2011) (“[Section] 282 creates a presumption that a patent is valid and imposes the burden of proving invalidity on the attacker. That burden is constant and never changes and is to convince the court of invalidity by clear evidence.” (quoting

Am. Hoist & Derrick Co.

v.

Sowa & Sons, Inc.,

725 F.2d 1350, 1360 (Fed. Cir. 1984))). Furthermore, courts construe patent claims, if possible, to avoid invalidity.

See, e.g.,

Star Scientific, Inc.

v.

R.J. Reynolds Tobacco Co.,

655 F.3d 1364, 1373 (Fed. Cir. 2011);

Exxon Research & Eng'g Co.

v.

U.S.,

265 F.3d 1371, 1375 (Fed. Cir. 2001) (A claim is found to be indefinite only where it is not “amenable to construction” or “insolubly ambiguous.”).

The adoption of the “broadest reasonable interpretation” standard is further consistent with the legislative history of the Leahy-Smith America Invents Act, which indicates that Congress was aware of the “broadest reasonable interpretation” standard and expected the Office to apply the standard to the new Leahy-Smith America Invents Act review proceedings.

See, e.g.,

157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl). Nothing in the legislative history indicates that Congress or the drafters of the legislation considered a different standard for

inter partes

review, post-grant review, and covered business method patent review proceedings. Congress could have set forth a different standard in the Leahy-Smith America Invents Act, but instead, Congress provided the statutory mandate for the Office to prescribe regulations to set forth a standard.

Further, the Leahy-Smith America Invents Act amended 35 U.S.C. 315(d) to provide that, during the pendency of an

inter partes

review, if another proceeding involving the patent is before the Office, the Director may consolidate the

inter partes

review with the other proceeding into a single

inter partes

review proceeding. A similar provision is provided in 35 U.S.C. 325(d) for post-grant review and covered business method patent review. The Office, thus, has the discretion to consolidate a review proceeding with a pending reissue application or reexamination that involves the same patent, for example. Federal courts and

the Office have applied the “broadest reasonable interpretation” standard for nearly thirty years to patent claims in reissue applications and reexamination proceedings.

Yamamoto,

740 F.2d at 1571-72;

In re Reuter,

651 F.2d 751, 756 (CCPA 1981). It would be anomalous for the Board to have to apply two different standards in the merged proceeding.

Lastly, the Leahy-Smith America Invents Act also amended 35 U.S.C. 318(a) to provide that 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 under 35 U.S.C. 316(d), as amended. The same directive is provided in 35 U.S.C. 328(a) for post-grant review and covered business method patent review. As such, the Board is to determine the patentability of the challenged patent claims and any new claims, as opposed to the validity of the claims, which is the analysis conducted by a district court.

See also

35 U.S.C. 318(b), as amended, and 328(b). That distinction confirms Congress' intent for the USPTO to apply the typical framework it currently applies in existing patentability determinations.

The Office has taken into account the considerations identified in 35 U.S.C. 316(b), as amended, and 35 U.S.C. 326(b) in promulgating the rules. To prevent inconsistencies and inefficiencies, a single claim construction standard must be used throughout a proceeding reviewing the patentability of the claims of a patent. In other words, the “broadest reasonable interpretation” standard must be applied to all of the involved claims in a single review proceeding including the challenged patent claims; any new claims added under 35 U.S.C. 316(d), as amended, or 35 U.S.C. 326(d); any claims from a merged derivation proceeding; any original, new, or amended claims from a merged reissue application; and any original, new, or amended claims from a merged reexamination.

For the foregoing reasons, the Office has the authority to prescribe regulations to set forth the claim construction standard for

inter partes

review, post-grant review, and covered business method patent review proceedings, and believes that the “broadest reasonable interpretation” standard should be employed.

Comment 29:

Several comments suggested that the claim construction standard set forth in the proposed rules is inconsistent with 35 U.S.C. 301(d) because the statute recognizes that the claim construction in an infringement action should be used in an

inter partes

review. A comment suggested that the claim construction standard should be guided by 35 U.S.C. 301(d), and the Office should determine the “proper meaning” of the claim, rather than applying the “broadest reasonable interpretation” standard.

Response:

The legislative history of the AIA shows that 35 U.S.C. 301(d) was not intended to change the “broadest reasonable interpretation” standard. Rather, it was to help the Office to identify inconsistent statements made by a patent owner about claim scope. In particular, Senator Kyl stated the following:

Section 5(a) of the 2009 version of the bill, which would amend section 301, has been modified and moved to section 5(g) of the bill. This provision allows written statements of the patent owner regarding claim scope that have been filed in court or in the Office to be made a part of the official file of the patent, and allows those statements to be considered in reexaminations and

inter partes

and post-grant reviews for purposes of claim construction. This information should help the Office understand and construe the key claims of a patent.

It should also allow the Office to identify inconsistent statements made about claim scope-for example, cases where a patent owner successfully advocated a claim scope in district court that is broader than the “broadest reasonable construction” that he now urges in an inter partes review.

157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (emphasis added).

Further, 35 U.S.C. 301(d) provides that: “[a] written statement submitted pursuant to [section 301](a)(2), and additional information submitted pursuant to [section 301](c), shall not be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324.” The statutory language of 35 U.S.C. 301(d) does not set forth any claim construction standard, nor require the Office to adopt the claim construction standard used by district courts. Indeed, the statutory provision merely provides limitations on when the Office may consider such a statement or information. The Office has the discretion, but is not required, to consider such a statement or information in an instituted review (

inter partes

review, post-grant review, or covered business method patent review). Therefore, the “broadest reasonable interpretation” standard is consistent with 35 U.S.C. 301(d).

As to the comment regarding the “proper meaning” of the claim, the comment is incorrect when it implies that claims are not properly construed using the “broadest reasonable interpretation.” Consistent with the judicial precedent of Federal Circuit, the Office recognizes that it is proper to construe patent claims by applying the “broadest reasonable interpretation” standard in patentability determination proceedings.

See, e.g.,

NTP,

654 F.3d at 1274 (the Board's construction “is legally correct and is reasonable in view of the written description and how the written description would be interpreted by one of ordinary skill in the art”).

Comment 30:

Several comments opposed proposed §§ 42.100(b), 42.200(b), and 42.300(b) and believed that the Office's claim construction should be the same as that used in the district courts for invalidity or infringement suits. In particular, the comments suggested that the proposed rules should be revised to state that “[a] claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification and the prosecution of the patent in which it appears.” To support their position, those comments suggested that if the Office adopts the proposed rules, the patent owner will be faced with a broad construction in the validity litigation and a narrow construction in the infringement phase. Several comments stated that the case law before the enactment of the AIA (

e.g., Yamamoto

) is inapplicable to

inter partes

review, post-grant review, and covered business method patent review proceedings, because the justification for applying the “broadest reasonable interpretation” standard in reexaminations and reissue applications, in which patent owners have unlimited ability to amend claims, does not extend to the review proceedings. On the other hand, several other comments were in favor of the proposed rules. Those comments recognized that the claim construction standard used in administrative trials before the Office should be different from the one used by the district courts in invalidity and infringement actions, and noted that two different standards for claim construction existed before the AIA.

Response:

The Office has considered carefully those comments that suggested use of the district court's standard and the comments that supported use of the “broadest reasonable interpretation” standard as set forth in the proposed rules. The Office adopts the “broadest reasonable interpretation” standard in this final rule in light of statutory language in the AIA, legislative history, and judicial precedent.

As stated previously, both the Federal Circuit and Congress recognize that the

patent system has two claim construction standards: (1) The “broadest reasonable interpretation” used by the Office in patentability determination proceedings; and (2) the other used by district courts in invalidity and infringement actions.

See, e.g.,

Phillips,

415 F.3d at 1316; 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl). The Office and courts have been applying these standards for nearly thirty years when construing patent claims. Congress recognized the “broadest reasonable interpretation” standard in the legislative history of the AIA, and did not set forth a different standard or mandate the Office to apply the district court's standard. As explained in previous Responses, these and multiple other statutory and legal considerations suggest that the Board should not apply the district court's claim construction standard.

Although the comments not in favor of the proposed rules implied that the suggested standard (“[a] claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification and the prosecution of the patent in which it appears”) is used by the district courts, the district courts do not use this suggested standard. In any event, the Office may take into consideration inconsistent statements made by a patent owner about claim scope, such as those submitted under 35 U.S.C. 301(a), when applying the “broadest reasonable interpretation” standard.

As to the comments that the “broadest reasonable interpretation” standard applies only where patent owners have unlimited ability to amend in reexaminations and reissue applications, the Office does not believe those comments are correct. There is no indication that an unlimited ability to amend is required when employing the current USPTO construction standard; the rationale is simply that the broader standard serves to identify ambiguities in the claims that can then be clarified through claim amendments. That rationale applies under the current proceedings. For

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review, post-grant review, and covered business method patent review proceedings, §§ 42.121 and 42.221 provide patent owners the opportunity to file a motion to amend after conferring with the Board. Moreover, additional motions to amend may be authorized when there is a good cause showing or a joint request of the petitioner and the patent owner to advance materially a settlement. Further, the current practice for reexaminations and reissue applications allows for limited opportunity to amend patent claims. For instance, the current practice provides that the second Office action generally will be made final. §§ 1.116(b) and 41.33(b); MPEP §§ 706.07(a) and 2271 (“[A] reexamination may result in the final cancellation of claims from the patent and that the patent owner does not have the right to renew or continue the proceedings.”).

Comment 31:

One comment requested clarification on whether the Office will consider a written statement and information submitted pursuant to 35 U.S.C. 301 when deciding whether to institute a review if such a statement or information is submitted in a petition for a review.

Response:

The Office may consider statements of the patent owner filed in a proceeding before a Federal court or the Office regarding the claim scope of a patent. However, if the petition merely presents a copy of a submission under 35 U.S.C. 301, the Office's consideration of such a submission is limited by 35 U.S.C. 301(d).

Comment 32:

Several comments suggested that the Office should not prescribe a claim construction standard in the regulation, but rather apply applicable judicial precedent or adopt the district court's construction when there is one. Several comments, however, were in favor of the Office setting the “broadest reasonable interpretation” standard in the regulations. One of the comments pointed out that the Office has done the public a service by announcing the standard in a rule.

Response:

The AIA provides that the Office shall prescribe regulations setting forth the standard for the showing of sufficient grounds to institute, establish and govern a review and the relationship of the review to other proceedings. 35 U.S.C. 316(a)(2) and (a)(4), as amended; 35 U.S.C. 326(a)(2) and (a)(4). Therefore, setting forth a claim construction standard for the proceedings is consistent with the mandates in the AIA. As discussed previously, the “broadest reasonable interpretation” is also consistent with the AIA and the judicial precedent for construing patent claims in patentability determination proceedings before the Office.

Comment 33:

One comment sought clarification on whether the “broadest reasonable interpretation” standard will be applied throughout the proceeding.

Response:

The claim construction standard set forth in §§ 42.100(b), 42.200(b), and 42.300(b) will apply throughout the proceeding when the Board determines whether to institute the review and when the Board determines the patentability of any challenged patent claim and new claims.

Motion To Correct Petition (§§ 42.104(c), 42.204(c), and 42.304(c))

Comment 34:

Two comments suggested that the rules should specify that only non-substantive clerical or typographical errors can be corrected in a petition without changing the filing date of the petition since allowing correction of substantive mistakes without changing the filing date can substantially disadvantage the patent owner.

Response:

Sections 42.104(c), 42.204(c) and 42.304(c) only allow for a motion to correct due to clerical or typographical mistakes without a change in filing date. There is no provision allowing for the correction of a mistake that is not clerical or typographical in nature without a change in filing date. Furthermore, when determining whether to grant a motion to correct a petition, the Board will consider any substantial substantive effect, including any effect on the patent owner's ability to file a preliminary response.

Requirement for Claim Construction (§§ 42.104(b)(3), 42.204(b)(3), and 42.304(b)(3))

Comment 35:

Several comments recommended that the requirement for setting forth the claim construction of the challenged claims in the petition should be eliminated because, according to the comments, the requirement is burdensome and will create delays. Further, one comment suggested that claim construction should only be required to the extent necessary to establish the challenged claim is unpatentable. Other comments were in favor of the requirement.

Response:

The Office believes that the petitioner's claim construction requirement is not burdensome and will improve the efficiency of the proceeding. In particular, the petitioner's claim construction will help to provide sufficient notice to the patent owner on the proposed grounds of unpatentability, and assist the Board in analyzing to how a cited prior art reference meets the claim limitation(s). During a proceeding, a claim of an unexpired patent will be given its broadest reasonable construction in light of the specification of the patent in which it appears.

See, e.g.,

§ 42.100(c). This means that the words of the claim will be given their plain meaning unless the plain meaning is inconsistent with the specification.

In re Zletz,

893 F.2d 319, 321 (Fed. Cir. 1989). In the absence

of a special definition in the specification, a claim term is presumed to take on its ordinary and customary meaning, a meaning that the term would have to a person of ordinary skill in the art.

In re Am. Acad. of Sci. Tech Ctr.,

367 F.3d 1359, 1364 (Fed. Cir. 2004). Therefore, petitioners are not required to define every claim term, but rather merely provide a statement that the claim terms are presumed to take on their ordinary and customary meaning, and point out any claim term that has a special meaning and the definition in the specification.

Comment 36:

A few comments suggested that the Office should adopt claim construction procedures similar to those in the district courts, as opposed to requiring the petitioner to submit a statement to identify how the challenged claim is to be construed.

Response:

The Office believes that the petitioner's claim construction requirement will improve the efficiency of the proceeding. As discussed previously, the petitioner's claim construction will help to provide sufficient notice to patent owner on the proposed grounds of unpatentability, and assist the Board in analyzing how a cited prior art meets the claim limitation.

Comment 37:

One comment suggested that the requirement of a claim construction is not set forth in 35 U.S.C. 312(a)(3), as amended.

Response:

Although the claim construction requirement is not provided expressly in the AIA, 35 U.S.C. 312(a)(4), as amended, states that “the petition provides such other information as the Director may require by regulation.” Furthermore, 35 U.S.C. 316(a), as amended, provides that the Director shall prescribe regulations setting forth the standards for the showing of sufficient grounds to institute an

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review. Therefore, the claim construction requirement is consistent with the AIA.

Comment 38:

One comment requested more guidance as to the claim construction requirements. The comment further expressed a concern that it is unclear whether the patent owner is required to take a claim construction position. A few comments suggested that the patent owner should address the petitioner's claim construction, and the parties should have an opportunity to respond to the Board's decision. Another comment suggested that the rules should set forth the procedure for claim construction.

Response:

As discussed previously, a claim of an unexpired patent will be given its broadest reasonable construction in light of the specification.

See, e.g.,

§ 42.100(c). Petitioners must identify how the challenged claim is to be construed.

See, e.g.,

§ 42.104(b)(3). Petitioners are not required to define every claim term, but merely to provide a statement that the claim terms are presumed to take on their ordinary and customary meaning, and to point out any claim term that has a special meaning and the definitions in the specification. A patent owner may file a preliminary response to set forth reasons why no review should be instituted, including a response to any claim construction issues.

See, e.g.,

§ 42.107(a). After the review is instituted, the patent owner may file a response to the petition addressing any ground for unpatentability not already denied, including a response to the decision on petition and any claim constructions set forth therein.

See, e.g.,

§ 42.120(a). The petitioner may file a reply to the patent owner's response.

See

§ 42.23.

Comment 39:

One comment suggested that a petitioner's claim construction should have no effect on other proceedings, and requested clarification that the petitioner's claim construction is relevant only to the proceeding and will not vary or limit the scope of the claims in litigation.

Response:

The determination of the meaning of the claim terms and the scope of the claims depends on the particular facts of each case. The Office cannot prejudge the effect, if any, of the petitioner's claim construction on other proceedings, or know whether a district court will consider such information or not.

Comment 40:

One comment expressed a concern as to restricting claim construction later in the proceeding and suggested that the rules should permit alternative claim construction in the petition, and revised claim construction later in the process.

Response:

The rules do not preclude providing alternative claim constructions in a petition or in later-authorized filings.

Service (§§ 42.105 and 42.205)

Comment 41:

A few comments suggested that proposed §§ 42.105(a) and 42.205(a) should be revised to provide that service by mailing is sufficient, and clarified to provide that there is no requirement for personal service or proof of service on a current patent owner who is not of record. In particular, one comment suggested that the rules should expressly provide that service must be made by EXPRESS MAIL® or by means at least as fast and reliable, or upon agreement of the parties, that service may be made by facsimile or electronically.

Response:

In view of the comments, §§ 42.105 and 42.205, as adopted in this final rule, expressly provide that, upon agreement of the parties, service may be made electronically, and service may be made by EXPRESS MAIL® or by means at least as fast and reliable as EXPRESS MAIL®. Under the rules, personal service is not required. The rules also do not require serving a patent owner who is not of record.

Comment 42:

A few comments suggested that the Office should eliminate the requirement set forth in proposed §§ 42.105(b) and 42.205(b) for contacting the Board when the petitioner cannot effect service of the petition on the patent owner at the correspondence address of record of the patent.

Response:

The suggestion has been adopted. Sections 42.105(b) and 42.205(b), as adopted in this final rule, do not include the requirement for contacting the Board when the petitioner cannot effect service.

Comment 43:

One comment recommended that the rules should provide that service on the last designated representative of the patent owner is also sufficient.

Response:

Sections 42.105 and 42.205(a) provide that 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. Serving on the correspondence address of record for the subject patent is consistent with the Office's current practice (§ 41.106(e)). Therefore, service on the last designated representative of the patent owner of record is sufficient if that is the same as the correspondence address of record for the subject patent.

Comment 44:

One comment suggested that each party should be required to specify its preferred method for service as part of the mandatory notices.

Response:

Each party may express its preferred method for service. However, the Office does not believe such a requirement in the rule is necessary.

Filing Date (§§ 42.106(b) and 42.206(b))

Comment 45:

A few comments suggested that the Office should accept petitions that have minor deficiencies. A few comments also requested clarification on whether, for minor omissions or mistakes, the Office would waive the rule requirements and grant a filing date as soon as the statutory requirements are met.

Response:

The Board generally will accord a filing date and accept minor deficiencies that do not impact the

Board's ability to determine whether

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