uspto.gov www.uspto.gov www.doc.gov
Skip over navigation

Navigation

AIA Blog

Saturday Aug 18, 2012

Top 10 Differences Identified Between Proposed and Final Rules for Provisions Effective on September 16, 2012

Message From Janet Gongola, Patent Reform Coordinator:

The agency has released final rules for all of the new provisions of law going into effect on September 16, 2012.  There are seven provisions in total, and they include inventor’s oath/declaration, preissuance submissions, citation of patent owner claim scope statements, supplemental examination, inter partes review, post grant review, and covered business method review. 

Several months ago, the agency released proposed rules for these provisions and solicited public comments on its proposals.  The agency received much helpful input and appreciates the public’s participation in the rulemaking process.  The agency made many modifications to its proposed rules in developing the final rules based on the public feedback.

To expedite your review of the final rules as compared to the proposed rules, we have assembled the key differences between the two.  The first table below captures the top ten differences for the new administrative trials while the second table shows the top ten differences for the remaining provisions.  The differences reflected in these tables are not exhaustive; there are additional ones between the proposed and final rules of smaller scope not captured in the tables.  But the differences featured in the tables are intended to give you a start for comparison.

TABLE 1: Proposed Versus Final Rules for the New Administrative Trials

  Proposed Final
1

Fees for claims challenged in excess of 20 based on increments of 10 claims

IPR fee:

  • 1 to 20 claims - $27,200.00
  • 21 to 30 claims $34,000.00
  • 31 to 40 claims - $40,800.00
  • 41 to 50 claims - $54,400.00
  • 51 to 60 claims - $68,000.00
  • Additional fee for each additional 10 claims or portion thereof - $27,200.00

PGR fee:

  • 1 to 20 claims - $35,800.00
  • 21 to 30 claims - $44,750.00
  • 31 to 40 claims - $53,700.00
  • 41 to 50 claims - $71,600.00
  • 51 to 60 claims - $89,500.00
  • Additional fee for each additional 10 claims or portion thereof - $35,800.00

Fees for claims challenged in excess of 20 based on flat per claim fee

IPR fee:

  • 1 to 20 claims - $27, 200.00
  • For each claim in excess of 20 claims - $600.00

PGR fee:

  • 1 to 20 claims - $35,800.00
  • For each claim in excess of 20 claims - $800.00
2

Page limits more restricted, and statement of material facts included in page count

Petition requesting IPR review and opposition: 50 pages

Petition requesting PGR review and opposition: 70 pages

Petition requesting CBM review and opposition: 70 pages

Claim charts must be double-spaced

Page limits increased, and statement of material facts eliminated from page count

Petition requesting IPR review and opposition: 60 pages

Petition requesting PGR review and opposition: 80 pages

Petition requesting CBM review and opposition: 80 pages

Claim charts may be single-spaced

3 Board may recognize counsel pro hac vice during a proceeding upon a showing of good cause, subject to conditions as the Board may impose Same as proposed with the additional specification that lead counsel be a registered practitioner
4

Party may move for additional discovery

Parties may agree to additional discovery between themselves

Parties may agree to mandatory discovery requiring initial disclosures

5 Non-cumulative information that is inconsistent with a position advanced by the patent owner or petitioner must be filed as soon as practicable.  Party submitting the information must specify the relevance of the information Eliminate the non-cumulative requirement as well as requirement to explain the relevance of the information that is inconsistent with a position advanced by the party
6

Due date for patent owner response to petition is two months from the date the IPR/PGR review was instituted

Default date for filing a patent owner response is three months from the date the IPR/PGR review was instituted
7 Patent owner preliminary response may not include testimonial evidence but instead only documentary evidence Patent owner preliminary response may include new testimonial evidence where a party demonstrates that such evidence is in the interests of justice
8 Petitioner may request to file a motion identifying supplemental information relevant to a ground for which the trial has been instituted and that the request must be made within one month of the date the trial is instituted

Party may file a motion to submit supplemental information if the request for authorization to file the motion is made within one month of the date the trial is instituted and the supplemental information must be relevant to a claim for which the trial has been instituted

Party seeking to file supplemental information one month after the date the trial is instituted must request authorization to file the motion.  Motion must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests of justice  

9 Patent owner may file one motion to amend the patent claims but only after conferring with the Board

Patent owner may file an initial amendment without Board authorization but must discuss the amendment in a conference call with the Board prior to filing

Additional motion to amend may be authorized when there is a good cause showing (i.e., where supplemental information is belatedly submitted) or a joint request to materially advance settlement

10

Patent owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent:

(i) A claim to substantially the same invention as the finally refused or cancelled claim;

(ii) A claim that could have been filed in response to any properly raised ground of unpatentability for a finally refused or cancelled claim; or

(iii) An amendment of a specification or of a drawing that was denied during the trial proceeding.

Modification of  (i) to preclude patent owner from obtaining patentably indistinct claims, and elimination of (ii)

TABLE 2: Proposed Versus Final Rules for Other Provisions

  Proposed Final
Inventor’s Oath/Declaration
1 Only the inventor may file an application for patent as the applicant Inventor, assignee, or obligated assignee may file an application for patent as the applicant
2 Inventor’s oath/declaration must identify the entire inventive entity Inventor’s oath/declaration need not identify the entire inventive entity, if a signed Application Data Sheet (ADS) is filed that includes identification of each inventor
3 Inventor’s oath/declaration must be filed with application or shortly thereafter Filing of an inventor’s oath/declaration may be postponed until a time period set forth in a Notice of Allowability expires, if a signed ADS is filed that includes identification of each inventor
Preissuance Submissions
4 No notification provided to applicant upon entry of a compliant submission in an application file Notification to applicant upon entry of a compliant submission in an application file
5 No notification to a third party if the submission is deemed non-compliant Notification to a third party if the submission is deemed non-compliant
6 Submissions permitted in reissue applications Submissions are not permitted in reissue applications
Citation of Patent Owner Claim Scope Statements
7 Patent owner statement may have been filed in the court or Office proceeding by any person Patent owner statement must have been filed in the court or Office proceeding by patent owner
8 Statement must have originated in a court or Office proceeding Statement may have originated outside of the court or Office proceeding in which it was filed
Supplemental Examination
9 Items of information increased to 10 Items of information limited to 12
10 Content requirements have been streamlined and are comparable to requirements for a request for ex parte reexamination Content requirements more detailed

This page is owned by Patents.