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Post-Grant Review of Patent Claims

Action:


The patent laws should be amended to provide for a post-grant review of patentability of patent claims.

Background Information:


Currently post-grant review of the patentability of patent claims takes place before the USPTO (1) when an applicant files an application to reissue a patent and requests correction of at least one error in the patent, (2) when an interference is declared between the patent and a pending application, and the applicant in the interference seeks judgment based on unpatentability of patent claims, (3) when a patent owner or a third-party requests reexamination of the patent, and (4) when the Director initiates reexamination of a patent on his own initiative.  Apart from an interference, however, a third party’s ability to challenge the patentability of patent claims in the Office is limited to grounds based on prior art patents or printed publications. In addition, a third party outside the interference context cannot conduct discovery and develop evidence necessary to challenge patentability. These limitations on third parties prevent the public from effectively challenging patents, unless and until a lawsuit is threatened, at which point the threatened party can proceed with an expensive and often lengthy civil suit. Inter partes post-grant review would allow third parties to challenge recently issued patents within the Office and give parties threatened with litigation an alternative forum to challenge patent validity. By using the Office’s expertise, these challenges could be adjudicated for less money and in less time than by civil suit. This will enhance the patent system as a whole by strengthening those patents that survive the review and eliminating those patents which contain unpatentable subject matter.   

Summary of Proposed Post-Grant Review Procedures:


Implementation of a post-grant review procedure in the form of a review proceeding is recommended to provide for correction of recently issued patents.  The same proceedings would also provide accused infringers and patent holders with an alternative forum to district court litigation of patent validity issues. 

The proposed review proceeding would allow the public to petition the USPTO to cancel one or more claims in a patent within one year of its issue date.  And it allows anyone who is threatened with a patent infringement suit to petition for review within four months of being threatened.  To prevent misuse, the review petitioner would be required to make a sufficient initial showing of unpatentability; otherwise the petition would be dismissed.  If the showing is found to be sufficient, a fact-finding proceeding leading to a hearing by the Board of Patent Adjudication on the merits would follow.  It is contemplated that both parties would be obliged to make mandatory disclosure of all relevant information, followed by discovery as permitted by the Board of Patent Adjudication.  During the review proceeding, the patent owner would have a single opportunity as of right to make a narrowing amendment of the challenged claims.

The proceedings would be conducted by the Board of Patent Appeals and Interferences (Board), renamed the Board of Patent Adjudication.  Thus, Administrative Patent Judges (APJs) of the Board would preside over streamlined hearings, designed to be concluded within a year, in which direct cases could be presented by documents, and live cross-examination allowed where necessary. 

The proposed new proceeding would expand the role of the USPTO in enhancing the integrity of the intellectual property system.  The USPTO’s role in verifying the validity of issued patents is currently limited to ex parte or inter partes reexamination proceedings, which subject issued patents to a reiteration of the examination process but not to a fully adversarial adjudicative process, or to interferences, in which patentability can be challenged in an action concerning priority but only for a limited period and only by an applicant whose patent application presents interfering subject matter.  The limitations of both systems have caused them to be underutilized, while the proportion of patent cases reaching full adjudication in the district courts has declined.  An expedited process providing for full adjudication by the Board of unpatentability claims would help assure that those potentially affected by the economic burdens of patents with invalid claims can obtain prompt redress.  At the same time, the availability of an amendment option would help assure patentees that the result of such an adversarial process could provide them better assured protection of their inventions, when appropriate.

Additionally, the present proposal would eliminate inter partes reexamination entirely and make initiation of third-party requested reexamination discretionary.  This should alleviate the burden on the examiners of having to examine complex and lengthy reexamination proceedings, and thus free examiners to examine applications and reduce pendency thereof since the post-grant review proceedings will occur at the Board and be handled by APJs.  Further, the proposal provides a vehicle wherein the third party develops and presents the evidence thus saving the Office a significant amount of resources that it currently expends in making the case for patentability.

Proof of Concept


The contours of this proposal follow upon the Board’s proof of its ability to improve the efficiency of inter partes proceedings.  The Board instituted a new Trial Section in 1998 in order to drastically reduce the pendency of interferences.  The expedited procedures that the Trial Section has developed have allowed it to reduce the number of pending interference to the lowest level in 20 years, reducing the time to decision in such cases to an average of 27 months.  By the end of fiscal year 2003, the Board expects to have terminated virtually all of the interferences declared before fiscal year  2002. 

Several additional steps that the Board will now take will further help it establish its capability to handle expedited proceedings.  The Board is now undertaking a deliberate program of increasing the number of APJs trained in the skills of conducting expedited inter partes proceedings.  In addition, the Office expects during fiscal year 2003 to issue proposed rules to institutionalize in interferences many of the procedures that the Trial Section has adopted by standing order.  This process will allow an opportunity for public input on expedited inter partes proceedings in the Board before Congress considers legislation to grant it patent review jurisdiction.

Implementing Post-Grant Patent Review:


  Alternative Design Issues, Options, and Recommendations


The pros and cons of significant alternative design issues with respect to such a proceeding are as follows:

Alternative Design Issue #1 - Nature of Proceedings


1.   Option A - Adopt a patent review proceeding that would be instituted before, and handled by, the Board of Patent Appeals and Interferences (Board).

(a) Pros

-     Provides quality check to USPTO examination which public can choose, particularly when patents have significant commercial effect.

-     Allows for USPTO to offer other forms of examination that may otherwise appear to compromise quality.

-     Relieves pressure on courts to decide validity questions.

-     Provides for prompter test of validity than court proceedings.

(b) Cons

-     European Patent Office (EPO) review proceedings are perceived as expensive and allowing for vexatious litigation.

-     Patent practitioners are more familiar with reexamination and expanding reexamination may serve some, if not all, of the same purposes without risks of great litigation burdens.

-        Determinations by the USPTO regarding some of the patentability requirements contained in sections 101, 102(a) (known/used by others bar), 102 (b) (public use/on-sale bar), 112 (best mode requirement) may be controversial with the patent bar.

2.   Option B - Expand Inter Partes Patent Reexamination

 (a) Pros

-        Builds and expands on procedure already in place.

-        Proposal regarding this option is currently pending in Congress.

-        Examiner would evaluate evidence in the first instance.

-        Relieves courts and provides for prompter test of claim validity than courts.

-        May relieve parties of some of the burdens of litigation.

(b) Cons

-        Reexamination is less comprehensive and not a complete substitute for district court litigation of defense of validity.

-        Permits amendment of claims thereby creating a moving target for petitioner.  Courts cannot allow amended claims.

-        Adjudication before examiner, not before an inter partes hearing officer where demeanor of witnesses can be observed.

-        Difficult to have examiner control discovery and other inter partes issues for which examiners are not trained.

-        Does not necessarily provide marketplace quality check to USPTO examination.

3.   Recommendation:

  Propose legislation creating expeditious post-grant patent review proceeding with protections against cost and vexatious litigation.


Alternative Design Issue #2 - Timing of Review Proceeding


1.  Option A - Anyone may file a review petition anytime during a patent’s term.

 (a) Pros

-        Ability to file at any time opens the field to any challenger, so it can serve as a continuous quality check on patents throughout their life.

 (b)Cons

-        Absent any limitation on challengers or any limitation on the time when challenges may be asserted, patent owners will view the review proceeding as an unduly burdensome harassment tool.  A major objection to the analogous EPO practice is harassment of patent owners.

2.   Option B - A review petitioner must file petition within 12 months of the issuance of any claim challenged.

 (a) Pros

-        The 12-month deadline can provide patent owners with peace of mind that after a year from issuance, the patent claim is no longer subject to review.

 (b)Cons

-        Limiting the time for challenge curtails, to some extent, the effectiveness of the quality check on patents.

-        Fails to provide a mechanism to address challenges from alleged infringers who are accused more than a year after issuance of the patent claim.  Thus, in many instances, Option B would not provide an alternative to district court invalidity litigation.

-        May lead to review proceedings where the subject matter lacks real commercial significance, e.g., a review presented by a public interest group.

-        Consistent with EPO experience, concentrating review petitions in the first year of issuance may create an initial flood of proceedings, rather than having them spread out over the lives of the patents.

3.   Option C - A review petitioner must file petition within 12 months of the issuance of any claim challenged, except that after 12 months, a review petitioner may file a petition not later than 4 months after the review petitioner is placed in “substantial apprehension” of being sued for infringement of the challenged patent claim.

(a) Pros

-        Opens the window of time and the field of challengers wider to include those who, even more than a year after the patent issues, would meet standards similar to the jurisdictional requirements for a declaratory judgment action on patent invalidity in district court.  Thus, it almost always provides an alternative to district court.

(b) Cons

-        May limit, to some extent, the effectiveness of the review proceeding as a quality control mechanism.

4.   Recommendation:

  Option C is recommended, as striking the most appropriate balance between security and predictability for the patent owner, on the one hand, and providing a viable alternative to district court invalidity cases, on the other hand, i.e., more marketplace confidence in patent validity.  The 12-month window where any party may challenge the patent allows for a period of quality check from outside the USPTO, while affording the patent owner greater stability after the 12 months expires.  The additional window for petitioning to cancel is provided only to those who have some substantial apprehension of being sued, so that the patent owner exercises control over who might qualify as a review petitioner under the 4-month provision.  Option C also ensures that anyone who could go to district court to litigate the validity of a patent claim can also resolve the matter in a review proceeding in the USPTO.


Alternative Design Issue #3 - Grounds for Patent Review That May Be Brought In Review Proceeding


1.   Option A - Allow any and all grounds that may be brought in a district court to challenge patent validity or enforceability.

(a) Pros

-        Encourages petitioners to use the proceeding rather than burdening district courts with declaratory judgment actions.

-        Ensures that all issues related to patent validity can be heard in a single forum.

(b) Cons

-        Places the heaviest burden on the Office.

-        Requiring the Office to determine issues of enforceability will require development of new expertise within Office.

-        Allowing Office to determine issues of enforceability will be controversial within the patent bar.

-        Allowing the Office to determine certain issues of validity, e.g., known or used by others, may be controversial within the patent bar.

2.   Option B - Allow any and all grounds that may be brought in a district court to challenge patent validity, but not to challenge patent enforceability.

(a) Pros

-        Encourages petitioners to use the proceeding rather than burdening the district court with declaratory judgment actions.

-        Would not require Office to develop new expertise, as such issues are now considered in interference proceedings.

-        Ensures that all issues related to patent validity will be heard in a single forum.

-        As interference proceedings are now used as back-door means to cancel patents, the demand for the Office to consider such matters currently exists and including all validity issues in review proceedings would eliminate limitations on when such proceedings can be brought.

(b) Cons

-        Requires litigants who wish to raise enforceability concerns to go to district court.

-        Allowing the Office to determine certain issues of validity, e.g., known or used by others, may be controversial within the patent bar.

3.   Option C - Allow only certain grounds related to patent validity and nothing related to enforceability to be brought before the Office.

(a) Pros

-        Does not require the Office to become involved in enforceability issues.

-        Limits amount of discovery that must be allowed and supervised.

(b) Cons

-        Requires litigants who wish to raise enforceability concerns to go to district court.

-        Requires litigants who wish to raise certain issues of patentability to go to district court.

-        Will likely be of less use to litigants who may have to use multiple forums to decide patent validity.

-        Would increase likelihood of using the Office for harassment during infringement cases because patent owner could be forced into multiple actions to defend validity of patent.

4.   Recommandation:  Option B.  This would clearly separate enforceability issues from validity issues.  It would allow the Office to use its expertise to check the quality of the patents and allow the district courts to use their expertise to determine issues such as fraud and inequitable conduct.

Alternative Design Issue #4 - Standing to Bring Review Proceeding


1.   Option A - Any person may file a petition for review-no standing requirement.

(a) Pros

-        Lack of a requirement for standing provides the strongest quality check on patents.

-        Simplifies proceeding and conserves resources because the Board will not need to adjudicate standing.

(b) Cons

-        Lack of a standing requirement makes use of a review proceeding more viable as a harassment tool.

-        Lack of a standing requirement may lead to proceedings that are politically or personally motivated involving subject matter of commercial significance.

-        Lack of a standing requirement may create Article III and prudential standing issues on judicial review as to review petitioners, possibly (1) precluding judicial review of holding that claim is patentable or (2) necessitating USPTO participation, including a greater burden on the USPTO Solicitor's Office.

2.     Option B - Any petitioner who believes that it is or will be economically damaged by the patent may file a petition for review at any time.

(a) Pros

-        Option B mirrors the standing requirement to cancel a trademark under 15 U.S.C. § 1092, except for the modification that the damage be economic; the standard will be familiar for the USPTO and for practitioners.

-        Option B is less restrictive than the standing requirement to litigate patent invalidity in district court, but still requires that some sort of potential dispute exist between the review petitioner and the patent owner.

(b) Cons

-        A less restrictive standing requirement increases the likelihood that review could be used for harassment.

3.   Option C - Any petitioner who believes that it is or will be “damaged” by the patent may file a petition for review (1) within 12 months of the issuance of any claim challenged, or (2) within 4 months of being placed in “substantial apprehension” of being sued for infringement of any claim challenged.

(a) Pros

-        Option C provides the most restrictive standing requirement, which offers patent owners the most protection against use of the review proceeding as a harassment tool.

-        Option C limits reviews to real controversies between parties as to the validity of a patent claim, and would eliminate Article III and prudential standing concerns on judicial review of any final USPTO review decision, without necessitating USPTO involvement.

(b) Cons

-        Limiting the field of challengers somewhat limits use of review as a quality check.

-        Restrictive standing requirements will likely complicate proceeding and require expenditure of resources for the Board  to adjudicate standing issues.

4.   Recommendation:  Option A is recommended.  Option A allows the review proceeding to (1) function most effectively as a quality check, and (2) proceed expeditiously to the merits.

Alternative Design Issue #5 - Nature of Initial Showing Required of Petitioner


1.   Option A - Require review petitioner to show a prima facie case of unpatentability and provide initial disclosures similar to those required by Fed. R. Civ. P. 26(a).  Patent owner would then have an opportunity to challenge the adequacy of the prima facie case by moving to dismiss; alternatively the Board could also have authority to sua sponte dismiss deficient review petitions.  A decision by the USPTO that a prima facie case had been made out would not be subject to judicial review.

(a) Pros

-        Expedites the proceeding.

-        Maximizes possibility that petitioner has a genuine interest.

-        Reduces potential use of proceeding to harass patent owner.

(b) Cons

-        May be difficult to show some grounds of unpatentability (e.g., best mode, public use, on sale) without discovery, although a prima facie case would be evaluated on the basis of a proffer of evidence.

-        Difficult for a petitioner under the 4-month deadline to assemble case in that time frame.

-        Adds a step in the process--more burdensome for the Board.

2.   Option B - Require review petitioner to show a likelihood of success on the merits and provide initial disclosure (a showing of likelihood of success would be less than a showing of a prima facie case of unpatentability).  Patent owner can then challenge the adequacy of the showing, or the Board can sua sponte dismiss for failure to make the requisite showing.  A decision by the USPTO that a likelihood of success had been established would not be subject to judicial review.

(a) Pros

-        Eliminates meritless complaints at earliest stage.

-        Expedites the proceeding.

-        Ensures that the petitioner has a genuine interest.

-        Reduces harassment.

(b) Cons

-        Difficult to make out case for some grounds of unpatentability.

-        Difficult for a petitioner under the 4-month deadline to assemble case.

-        Adds a step in the process and makes it more burdensome for the Board.

3.   Option C - Require review petitioner to show a substantial new question of patentability and provide initial disclosures.  Patent owner could then challenge the adequacy of the showing, or the Board can sua sponte dismiss for failure to make the requisite showing.  A decision by the USPTO that a substantial new question of patentability had been established would not be subject to judicial review.

 (a)      Pros

-        Same standard used to determine whether the USPTO should begin a reexamination.

-        Eliminates meritless complaints at an early stage.

-        Expedites the proceeding.

-        Ensures that the petitioner has a genuine interest.

-        Reduces harassment.

(b) Cons

-        Difficult to make out case for some grounds of unpatentability.

-        Difficult for a petitioner under the 4-month deadline to assemble case.

-        Adds a step in the process and makes it more burdensome on the Board.

-        May cause confusion over what cause of unpatentability the petitioner may pursue.

-        May allow courts to read reexamination requirements into review proceedings.

4.   Option D - No threshold showing required other than a Fed. R. Civ. P. Rule 12(b)(6) standard, i.e., the review petitioner must state a claim upon which relief may be granted.

(a) Pros

-        Same standard is used by district courts.

-        Allows for the most bases of unpatentability to be brought in the proceeding - even those on which supporting information must be obtained through discovery.

-        Stronger patents may result.

(b) Cons

-        Allows maximum number of meritless petitions - harassment danger.

-        Could lengthen proceedings and encourage sand-bagging.

5.   Option E - Adopt Option A or B for 12-month proceedings, Option C for 4-month proceedings.

(a) Pros

-        Allows 4-month petitioner access to discovery and remedies.

-        Eliminates meritless petitions by 12-month petitioners.

(b) Cons

-        Adds a step in process for 12-month proceedings.

-        Difficult for 12-month petitioner to allege some grounds of unpatentability.

6.   Option F - Require initial statement of review grounds from petitioner, but give Director discretion to set time by which a showing of sufficient justification to proceed must be made.  Otherwise the Board may dismiss the proceeding.

7.   Recommendation:  Adopt Option F.  Allow the Director discretion to issue a regulation as to the time by which a petitioner must file all its supporting information, allowing the Board, either sua sponte, or on motion of the patent owner, to dismiss if the showing is insufficient to justify proceeding.  This lessens the initial burden so that petitioners may gather the necessary supporting information in the proceeding if such information would not otherwise be available to them.  Thus, review proceedings may serve the public interest by testing the patentability of claims in issued patents.  However, the patent owner is protected from harassment by economically disinterested parties through the required sufficiency showing.  A decision by the Board to dismiss the proceeding is final and not appealable.

Alternative Design Issue #6 - Discovery and Sanctions


1.   Option A - Mandatory initial disclosures of information, with no further discovery permitted.

(a) Pros

-        The lack of further discovery would streamline the proceeding.

-        Reduces the expense and burden on parties.

-        Reduces the opportunities to harass parties.

(b) Cons

-        Lack of discovery would not allow for adequate development of evidentiary cases.

-        Would preclude review from having collateral estoppel effect--no "full and fair opportunity to litigate".

2.   Option B - Mandatory limited initial disclosures of information, with further discovery for good cause shown.

(a) Pros

-        Further discovery affords a better opportunity to adequately develop cases.

-        Good cause standard for obtaining discovery contains expense associated with discovery.

-        Good cause standard allows the Board to determine whether the discovery is appropriate, and restrict its nature and volume.

-        Would likely meet standard for collateral estoppel of review proceeding.

(b) Cons

-        Restricted discovery may be viewed as limiting ability to develop cases.

-        Could lead to challenges to collateral estoppel effect of the Board decisions based on APJ exercise of discretion in limiting discovery.

3.   Option C - Mandatory initial disclosures, with unrestricted discovery.

(a) Pros

-        Allows full development of cases.

-        Maximizes chance that collateral estoppel effect will be accorded to final Board review determinations.

-        Parallels what is available in courts.

(b) Cons

-        Could render the review proceeding as expensive and burdensome as district court litigation.

-        Discovery could be used for harassment.

4.   Option D - Sanctions authority in accordance with (1) Fed. R. Civ. P. 11, including imposition of nonmonetary and monetary sanctions for bad faith pleadings or representations to the Board and (2) Fed. R. Civ. P. 37, including imposition of nonmonetary and monetary sanctions for failure to make disclosure or cooperate in discovery.

(a) Pros

-        Discourages harassment tactics and bad faith conduct in review proceedings.

-        Parallels authority available to district courts.

(b) Cons

-        Could result in burdensome collateral proceedings before the Board on sanction issues.

-        More complicated for the USPTO to administer.

-        Added burden on parties and possibly Solicitor's Office to defend sanctions awards.

5.   Recommendation:  Option B is recommended as striking the appropriate balance between the review petitioner, who may have a legitimate need to develop its case through discovery, and the patent owner, who may need protection from unduly burdensome unchecked discovery.  Option B allows further legitimate discovery, including discovery from third parties (35 U.S.C. § 24) whose information might not be available through mandatory disclosure, only where the Board deems it appropriate in scope and nature.  Option D is also recommended to allow the Board the necessary sanctions authority to control adversarial proceedings of this nature.

Alternative Design Issue #7 - Nature of Evidentiary Showing


1.   Option A - Apply preponderance of evidence standard.

(a) Pros

-        Traditional standard applied to proponent of proposition in administrative proceedings, including patent examination, patent reexamination, reissue proceedings and most interference issues.

-        Lesser standard than in district court assures that USPTO can use review proceeding as quality control measure.

(b) Cons

-        By allowing review on standard less than the clear and convincing evidence standard applied in district courts on the issue of patent invalidity, critics may perceive process as diminishing value of patent.

-        USPTO likely to become forum of choice by infringers because of lower evidentiary standard for obtaining a holding that a patent claim is unpatentable, not because of expertise.

2.   Option B - Apply Evidentiary Rules aligned with the Federal Rules of Evidence.

(a) Pros

-        Will eliminate one of objections to EPO practice, which allows extensive hearsay.

-        Fed. R. Evid. are used in district courts which has jurisdiction to consider patent claim invalidity and by the Boardin interference matters.

-        Experience in interference cases where Fed. R. Evid. has been applied since 1985 has minimized the need for resolution of issues related to admissibility of evidence.

(b) Cons

-        Those APJs who have principally handled ex parte appeals will lack experience with Fed. R. Evid. and will need training to avoid making technical errors leading to reversible error that more likely would not arise under more lenient Administrative Procedure Act standard.

-        May prolong proceedings unnecessarily.

3.   Option C - Allow presentation of case-in-chief by affidavit and deposition, followed by hearing allowing live cross-examination.

(a) Pros

-        Allows for full presentation of evidence and testing of case-in-chief through cross-examination.

-        Providing live cross-examination will maximize and preserve deference by appellate court to fact-finding by APJs who can observe demeanor.

-        Requirement that party present to opponent entire case-in-chief before opponent decides whether cross-examination is desirable, lessens (but does not necessarily eliminate) need for some discovery disputes, minimizes discovery disputes and allows more expedited proceeding.

-        Current interference proceeding and some district courts in non-jury trials require certain direct testimony to be presented in affidavit form, subject to live cross-examination; process has been found to be highly effective.

-        Permitting live cross-examination will enhance perception of process as suitable substitute for district court action while presentation of case-in-chief in paper will facilitate expedition.

(b) Cons

-        Lack of live direct testimony may mean that APJs’ ability to test credibility is narrower.

-        Use of live cross-examination may make expedition more difficult.

4.   Recommendation: Adopt Options A, B, and C.

Alternative Design Issue #8 - Amendment of Claims in Review Proceeding


1.   Option A - Allow no amendment of claims.

(a) Pros

-        More expedited proceeding.

-        Parallel to district court and U.S. International Trade Commission (USITC) proceedings, where no amendment is permitted.

(b) Cons

-        Would lead to multiplicity of proceedings, since amended claim could be obtained through reissue, reexamination, and interferences.

-        Would diminish settlement prospects.

-        Would diminish use of review to improve quality.

2.         Option B - Allow unlimited amendment of claims.

(a) Pros

-        Would substitute for reissue process.

-        Would diminish risk of unpatentability of substitute claim.

(b) Cons

-        Would unduly prolong proceeding.

-        Would be perceived as unfair to review petitioner, who must challenge a "moving target".

-        Would make review proceeding primarily into a form of examination.

-        Would diminish utility of proceeding as substitute for district court.

3.   Option C - Allow single, narrowing amendment of any claim at issue, with additional amendment on good cause shown.  Additional dependent claims would be allowed.

(a) Pros

-        Permitting narrowing amendment after petitioner's proffer would (1) encourage petitioner to be aware that an amendment might be presented, (2) to prepare for that contingency and (3) limit the need for extensive further discovery.

-        Provides a patent owner with a fair chance to maintain a patent with patentable claims.

-        Permitting one opportunity as a matter of right to present narrower claims has been a successful practice in interference cases.

-        Additional amendment with leave minimizes possibility of inadvertency leading to patent owner’s not obtaining valid claim.

(b) Cons

-        Less effective in allowing patent owner to assure obtaining valid claim.

-        Good cause motion practice may become burdensome.   

4.   Option D - Only permit amendment upon surrender of original claim.

(a) Pros

-        Would simplify subsequent litigation.

-        Somewhat parallels reissue.

(b) Cons

-        Would require patent owner to choose to abandon claims which are possibly patentable.

5.   Recommendation:  Adopt Option C.  Permit patent owner to propose single, narrowing amendment of claim at issue, and/or the addition of dependent claims, with additional amendment on good cause shown.  Do not require surrender of original claim.  This strikes the best balance between fairness to the patent owner and to the review petitioner.

Alternative Design Issue #9 - Time for Completing Review Proceeding


1.   Option A - Have statutory provision requiring the Director to put in place regulations designed to result in final decisions in review proceedings to be entered within one year from docketing of review proceeding.

(a) Pros

-        Would provide assurance of expedition without mandatory language that would make USPTO subject to mandamus in the event of reasonable delay.

-        Would give assurance to courts that stays of litigation pending outcome of review before USPTO would be justified.

-        USPTO has experience achieving one-year deadlines, since from 1998 it has decided the patentability phase of almost all interferences within a 10-month period; USITC sets 15-month goal for more complex patent cases.

(b) Cons

-        Would put pressure on Director to allocate budget to achieve set goal for review proceeding, perhaps at cost of other processes.

-        Alternative of mandatory deadlines would provide litigants more certainty.

-        Setting forth specific deadlines for interim points of proceeding within statute would provide greater assurance.

2.   Option B - Use "conducted with special dispatch" language to ensure that the Board will not allow other matters to take precedence.

(a) Pros

-        Does not interfere with Director discretion in setting priorities for funding in USPTO.

-        Instructs the Board as to priorities in proceedings.

(b) Cons

-        May not provide adequate assurance of expedition to make legislative package acceptable, because the Board has in past allowed inter partes proceedings to become quite extended and "special dispatch" proceedings are not reliably expedited in USPTO.

3.   Recommendation:  Set time-limited expedition goal in statute and give Director flexibility to design rules to meet it.

Alternative Design Issue #10 - Relation to Other Post-Grant Proceedings


1.   Option A - Eliminate inter partes reexamination.

(a) Pros

-        Process has been little used and its function is likely to be superseded.

-        Post-grant review would allow third parties to proceed on every ground available under inter partes reexam.

-       Post-grant review would also allow third parties to proceed on additional grounds and receive discovery not available under inter partes reexam.


(b) Cons

-        The fee for inter partes reexam is somewhat lower than anticipated for post-grant review therefore continued inter partes reexam might serve a niche market interested in challenges based solely on prior art patents and publications.

2.   Option B - Eliminate requirement that Director act on third-party requests for reexamination.

(a) Pros

-        Would facilitate devoting greater examiner time to original examination.

-        Would still allow requests to Director, thereby putting information in his hands to use at his discretion.

-        Would limit prospects of simultaneous parallel reexamination proceedings against same patent owner in USPTO.

-        In cases where parties are simply seeking an opinion from the USPTO, they can achieve the same effect by agreeing not to proceed beyond a motion to dismiss in a review proceeding.

-        Since review proceeding allows full participation by party challenging patent, limitations on third party-initiated reexamination should make it a less attractive option.

(b) Cons

-        Would eliminate reasonably efficient proceeding with which practitioners are familiar to decide friendly disputes on which they simply want declaration of rights and not cost of adversary proceedings.

-        Option of providing reexamination opportunity based on third-party submission on order of Director may be little used if requestor has no guarantee of action and thus may be less effective as a quality control procedure.

3.   Option C - Merge into review proceeding any issues raised in pending reexamination or narrowing reissue proceeding that review petitioner raises in review proceeding, and allow any other issues to proceed in reexamination or reissue.

(a) Pros

-        Would prevent parallel proceedings on same issues.

-        Would assure that review petitioner is fully informed of existence of other proceeding.

-        Would yield a single judgment from USPTO on overlapping issues.

(b) Cons

-        Would take choice of forum out of hands of patent owner and other third parties.

-        Would impose some administrative burdens in consolidating proceedings.

-        May, in some cases where reexamination is well developed, delay results.

4.   Option D - In the event of pending reissue proceeding in first two years after issuance of patent, when broadening is allowed, authorize review petitioner choice of whether to stay review proceeding pending outcome of reissue or vice-versa.

(a) Pros

-        Would minimize burden on patent owner of parallel proceedings without prohibiting reissue.

-        Allows review petitioner to delay effort of review litigation if narrowing amendment sought by patent owner ex parte would moot case.

-        Would allow narrowed claim to be tested by review petitioner if so chosen.

-        Prevents issuance by USPTO of inconsistent judgments and race between units of USPTO.

(b) Cons

-        Takes existing choice of reissue out of hands of patent owner.

-        May delay broadening reissue needed for other reasons.

5.   Option E - Review proceeding estops the parties and privies from pursuing district court actions, reexamination and future reviews on the same issues.

6.   Option F - Statute will give the Director flexibility to determine, by regulation or otherwise, the manner in which various proceedings will proceed, including the power to terminate, transfer, consolidate and/or stay any proceedings where appropriate.

(a) Pros

-        Offers the most flexibility to address complex (and currently unforeseeable) interrelationships between Office proceedings involving the same or related patents.

-        Conserves resources by ensuring that duplicative proceedings need not go forward concurrently.

(b) Cons

-        May be viewed as depriving parties of their current rights to pursue other Office proceedings, such as reexamination or reissue.

7.   Recommendation:  Eliminate inter partes reexamination, and third-party requested reexamination, as a matter of right, but not other forms of post-grant proceedings.  Give the Director broad authority to regulate the interrelationship among Office proceedings, to provide the most efficiency for the Office and the parties.

Alternative Design Issue #11 - Settlement


1.   Option A - Allow settlement by parties without reporting content of settlement to the USPTO or obtaining USPTO approval.

(a) Pros

-        Facilitates expedition in completion of proceeding.

-        Makes USPTO no more burdensome to parties than district court.

-        Recognizes that commercial interests of parties may be served by minimizing litigation costs.

(b) Cons

-        May lead to repeated review proceedings starting from scratch if other competitors also doubt validity of patent claim.

-        Provides less access by Federal Trade Commission (FTC) and Department of Justice (DOJ) to settlements than current law concerning interferences.

-        May lead to collusion between competitors.

2.   Option B - Allow parties to settle without approval by USPTO, but require filing of settlement agreement.

(a) Pros

-        Parallel to current interference practice (35 U.S.C. § 135(c)).

-        Provides antitrust enforcers ability to assure that USPTO not used to create anticompetitive agreements.

(b) Cons

-        May lead to preservation of claims that are known to, or suspected by, the Board to be unpatentable.

-        May make any follow-on litigation by other parties more burdensome on those other parties.

3.   Option C - Provide the Board ability to reject settlements terminating reviews, based on the public interest.

(a) Pros

-        Serves quality control purpose of proceeding by allowing the Board to cancel claims known, or suspected, to be unpatentable.

-        Prevents burden on third parties to bring additional proceedings.

(b) Cons

-        May discourage settlement and thus expedition in case.

-        May require APJ to exercise public policy discretion in matters beyond USPTO expertise (e.g., antitrust concerns).

-        Diverges from district court practice.

4.   Option D - Allow APJ to take other actions--require submission of discovery taken to date, Director-ordered reexamination--short of rejection of settlement.

(a) Pros

-        Would have less effect in discouraging potentially meritorious settlement while allowing USPTO to take action to minimize burdens on third parties.

-        Option would lessen risk of DOJ/FTC objection to review proceeding as possibly allowing collusion.

(b) Cons

-        USPTO may allow to stand some claims known to be unpatentable.

-        Would delay the proceeding.

-        APJs currently have authority to recommend Director-ordered reexamination, but Director-ordered reexamination rarely takes place.

-        Additional reexamination would take away resources available for initial examination of patents.

5.   Recommendation:  Adopt Option B, with appropriate modifications to the § 135(c) [interference settlement] model.  To protect against collusion, do not provide for the issuance by the Board of any decision on patentability of proposed amended claims, in the event of settlement.  This system places little burden on the Office, but still protects the public interest by requiring disclosure of settlement agreements and by minimizing any advantages that might be gained through collusion. 

Alternative Design Issue #12 - Judicial Review


1.   Option A - Allow judicial review of final decisions (not interlocutory orders) in the Federal Circuit or a district court.

(a) Pros

-        Would be parallel to most appeal processes from decision by USPTO.

-        Would allow parties to bring USPTO record before district court judge who has jurisdiction over total dispute between parties.

-        Expedition not as crucial as in original examination, where appeals may prolong patent term, but dual options allowed in those cases.

(b) Cons

-        Access to district courts will discourage full litigation before USPTO, thus detracting from utility of proceeding.

-        Prolongs proceedings, since appeal to Federal Circuit following district court decision would still be available.

-        Limits utility of proceeding to divert cases from judicial system.

-        Different standards applied in Federal Circuit (substantial evidence) and district court (clear error on existing evidence and de novo on new) encourages forum shopping.

2.   Option B - Allow appeal from final decisions to Federal Circuit only.

(a) Pros

-        Faster and eliminates forum shopping.

-        Encourages full submissions before agency, in which case judicial review by civil action should be unnecessary.

-        Serves efficiency in courts by eliminating claims that might otherwise proceed to full litigation and providing courts guidance on claims that are not cancelled.

-        Model already provided for this step in inter partes reexamination.

(b) Cons

-        Does not allow district court with jurisdiction over matter as a whole to reopen matter when justice warrants.

-        Push for expedition in USPTO may prevent full and fair opportunity of litigation.     

3.   Recommendation:  Adopt Option B.

USPTO Recommended Course of Action:

Implementation of a review proceeding is recommended to respond to strong interest from the public in such a proceeding, to provide a quality check on issued patents, and to provide an alternative to district court litigation of patent validity issues.  Legislation would be necessary, and is projected for submission to the Congress in January 2004.  Thus, implementation of the proceeding in the USPTO in fiscal year 2005 would be realistic.  Fees for review proceedings could be set to cover the costs of these proceedings.

The review proceeding should be structured to place some limits on when patents can be challenged and who is eligible to challenge them.  A review petitioner should be required to make a strong initial showing in order to go forward in the proceeding, and all parties should be required to make mandatory disclosures of the relevant information, with limited additional discovery allowed for good cause.  A patent owner would have the limited ability to narrow the challenged claims by amendment.  Hearings should be streamlined so that direct cases can be presented by documents, and live cross-examination allowed where necessary.  As structured, the proceeding could offer a more expedited and potentially less expensive alternative to district court, and could serve as a useful quality control mechanism for patents.

Estimated investment: 

1.     APJ training to allow APJs to become familiar with handling live testimony cases (currently only some interference APJs handle live testimony on an irregular basis).

2.     Promulgation of rules.

3.     Additional Associate Solicitor positions to defend the Board’s review decisions in appeals where, because of the lack of standing required for the 12-month review petitioner, the petitioner lacks standing (no actual “case or controversy”) to defend the decision.

4.     Currently, it would be somewhat difficult to assess the extent to which review might be used and hence the resources to implement review.  If review were to be instituted, it is likely--given trademark's experience--that interferences generally would not be necessary.  Accordingly, the Board’s resources dedicated to handling interferences at least initially would be expected to be sufficient to handle reviews, at least in a 2005 time frame. 

While there is no solid basis for estimating the number of reviews, if it is assumed that the Board would have to handle twice as many reviews as it handles interferences, it would be expected that 300 reviews could be presented in 2005.  Those reviews could be handled by the 15 APJs currently assigned to interferences, if it is assumed that interferences would decrease or be eliminated--probably a good assumption.  Additional resources would be a function of how successful review proceedings are viewed by the public and the number of reviews filed.  On the other hand, some reviews would take the place of reexaminations, and accordingly, there would be some examiner resources freed for other purposes.

Estimated benefits:

The principal benefit of the proposal is in providing a review proceeding where the patentability of patent claims can be tested, before the Office, by a party with an economic interest in determining the patentability of a claim.  The proceeding would be a cheaper and faster alternative to district court litigation and would serve as a useful quality control mechanism for patents.  Additionally, the proposal would eliminate inter partes reexamination entirely and make initiation of third-party requested reexamination discretionary.  This should alleviate the burden on the examiners of having to examine complex and lengthy reexamination proceedings, and thus free examiners to examine applications and reduce pendency thereof.  Further, the proposal provides a vehicle wherein the third party develops and presents the evidence thus saving the Office a significant amount of resources that it currently expends in making the case for unpatentability.
Implementation Schedule
Work Breakdown StructureTask NameStartFinishProject Lead
32Shared Responsibility 2/E-Government 3: P-05-01/P-05-03 - Post-Grant Review of Patent Claims and E-Processing06/03/0209/29/08B. Stoner
32.1Post Grant E-Processing: Implement Automation Requirements Phase 1 (P-05-03)06/03/0209/28/07 
32.1.1Develop initial e-processing concept for post grant review (P-05-03)06/03/0209/30/02 
32.1.2Create electronic file wrapper for all newly declared interferences (ACTS Interference) (P-05-03)07/01/0207/01/02 
32.1.3Identify requirements for handling post grant fees (P-05-03)08/01/0209/27/02 
32.1.4Plan scale up of ACTS Interferences Pilot with requirement of e-mail based filing of non-confidential communications combined with CD-ROM filing of confidential material (P-05-03)08/01/0208/30/02 
32.1.5Define minimum filing requirements for cancellations (P-05-03)09/03/0201/02/04 
32.1.6Implement scale up ACTS Interference with requirement of e-mail based filing of non-confidential communications combined with CD-ROM filing of confidential materials (P-05-03)09/03/0207/01/04 
32.1.7aDefine e-Records Management schedules for interferences (P-05-03)10/02/0209/29/03 
32.1.7bDefine e-Records Management schedules for cancellations (P-05-03)10/02/0309/30/04 
32.1.8Draft E-Processing Operating Concept (P-05-03)03/03/0405/03/04 
32.1.9Evaluate feasibility of using current e-mail system for filing of post grant delivery of non-confidential communications (Phase 2) (P-05-03)03/03/0305/01/03 
32.1.10Identify requirements for handling electronic/CD-ROM communications (P-05-03)10/01/0312/29/03 
32.1.11Draft E-Processing Business Process Requirements (P-05-03)05/03/0407/01/04 
32.1.12Assess transferability of ACTS Interference to Post Grant (P-05-03)05/01/0307/01/03 
32.1.13Develop E-Processing tasks order with baseline and project plan (P-05-03)01/05/0402/17/04 
32.1.14Draft E-Processing system requirements (P-05-03)10/01/0312/29/03 
32.1.15Advertise and hire Post Grant Cancellation System Development Manager for the OCIO (P-05-03)07/01/0309/29/03 
32.1.16Begin scanning all post grant paper-based communications, if ACTS interference is viable for post grant (P-05-03)10/01/0410/01/04 
32.1.17Administer e-processing system ACTS Interference based (P-05-03)10/01/0409/30/05 
32.1.18Define EFS requirements for Post Grant System (P-05-03)10/29/0312/29/03 
32.1.19Define RAM requirements for Post Grant System (P-05-03)10/29/0312/29/03 
32.1.20Define PALM requirements for Post Grant System (P-05-03)10/29/0312/29/03 
32.1.21Define AIS requirements for Post Grant System (P-05-03)10/29/0301/29/04 
32.1.21.1Define acceptable payment methods for cancellations for Post Grant System (P-05-03)10/29/0301/29/04 
32.1.21.2Define external user view capabilities (P-05-03)10/29/0301/29/04 
32.1.21.3Define rules for post grant filing protocols for Post Grant System (P-05-03)10/29/0301/29/04 
32.1.21.4Define filing receipt requirements for Post Grant System (P-05-03)10/29/0301/29/04 
32.1.21.5Evaluate and select electronic signature methods for Post Grant System (P-05-03)10/29/0301/29/04 
32.1.22Baseline EFS Project for Post Grant System (P-05-03)01/27/0402/17/04 
32.1.23Baseline RAM Project for Post Grant System (P-05-03)01/27/0402/17/04 
32.1.24Baseline PALM Project for Post Grant System (P-05-03)01/27/0402/17/04 
32.1.25Design, develop and test AIS for Post Grant System (P-05-03)02/02/0408/22/05 
32.1.26Enhance EFS for Post Grant System (P-05-03)03/01/0410/01/04 
32.1.27Enhance RAM for Post Grant System (P-05-03)03/10/0410/01/04 
32.1.28Enhance PALM for Post Grant System (P-05-03)03/01/0410/01/04 
32.1.29Acquire hardware and system software and installation for Post Grant System (P-05-03)11/01/0402/28/05 
32.1.30Perform independent validation and verification of post-grant case for Post Grant System (P-05-03)08/23/0409/21/04 
32.1.31Switch to post grant e-processing system (P-05-03)09/27/0409/29/04 
32.1.32Administer and maintain e-processing system post grant cancellation (P-05-03)10/01/0409/28/07 
32.1.33Identify requirements for full handling of electronic post grant communications (P-05-03)02/01/0503/01/05 
32.2Post Grant E-Processing: Implement Automation Requirements Phase 2 (P-05-03)07/15/0507/15/05 
32.2.1Begin 2nd phase requirement e-mail based filing of non-confidential communications combined with CD-ROM filing of confidential material (Phase 2), if ACTS interference is viable for Post Grant and e-mail delivery of communications is feasible (P-05-03)07/15/0507/15/05 
32.3Post Grant E-Processing: Implement Automation Requirements Phase 3 (P-05-03)07/01/0304/15/05 
32.3.1Evaluate EFS to be used with ePHOENIX for integration with ACTS Interference (Phase 3) (P-05-03)07/01/0307/01/04 
32.3.2Require filing of all confidential and non-confidential communications for post grant interference (Integration with ePHOENIX - Phase 3), if ACTS Interference is viable for post grant and EFS can be integrated (P-05-03)04/15/0504/15/05 
32.4Post Grant Review: Implement Post Grant Rule Changes Phase 1 (P-05-01 and P-05-03)07/22/0209/29/08 
32.4.1Internal consideration of post-grant rules (P-05-01)08/01/0201/15/04 
32.4.2Train additional APJs in Trial Section Interference Practice (P-05-01)08/01/0208/16/02 
32.4.3Draft proposed revised interference rules (P-05-01)08/01/0210/01/02 
32.4.4Draft proposed grant rules (P-05-01)08/30/0212/15/03 
32.4.5Determine employees post grant fee transactional functions and address labor relations implications (P-05-03)10/01/0204/01/05 
32.4.6Redesign support personnel PAPs to include cancellations (P-05-03)10/01/0204/01/04 
32.4.7Submit proposed revised interference rules to DoC for review (P-05-01)07/01/0308/01/03 
32.4.8Submit proposed revised interference rules to OMB for review (P-05-01)08/04/0310/02/03 
32.4.9Submit proposed post-grant rules to DoC for review (P-05-01)12/16/0301/15/04 
32.4.10Publish revised interference rules (P-05-01)01/02/0401/08/04 
32.4.11Period for comments on revised interference rules (P-05-01)01/08/0402/09/04 
32.4.12Submit proposed post-grant rules to OMB for review (P-05-01)01/15/0403/15/04 
32.4.13Introduce post-grant legislation (P-05-01)01/15/0402/09/04 
32.4.14Develop APJ training program for new post-grant review process (P-05-01)02/03/0402/25/04 
32.4.15Review comments and revise proposed rules (2nd time) (P-05-01)02/10/0405/10/04 
32.4.16Review by Solicitor's Office (P-05-01)03/01/0403/10/04 
32.4.17Review by OGL (P-05-01)03/10/0403/15/04 
32.4.18Publish post-grant rules (P-05-01)03/15/0403/22/04 
32.4.19Period for comments on post grant rules (P-05-01)03/22/0404/21/04 
32.4.20Review comments and revise post grant rules (P-05-01)04/21/0407/21/04 
32.4.21Submit revised interference proposed rules (2nd time) to OMB for review (P-05-01)05/10/0407/08/04 
32.4.22Review by Solicitor's Office (P-05-01)06/16/0406/28/04 
32.4.23Review by OGL (P-05-01)06/30/0407/07/04 
32.4.24Adopt/publish final revised interference rules (P-05-01)07/08/0407/19/04 
32.4.25Submit revised post grant rules to OMB for review (P-05-01)07/22/0209/20/04 
32.4.26Post grant legislation enacted (P-05-01)08/02/0408/02/04 
32.4.27Review by Solicitor's Office (P-05-01)09/02/0409/13/04 
32.4.28Review by OGL (P-05-01)09/15/0409/20/04 
32.4.29Adopt/publish final post grant rules (P-05-01)09/22/0409/30/04 
32.4.30Train APJs re new post grant law and rules (P-05-01)10/01/0410/18/04 
32.4.31Implement final post grant rules (P-05-01)10/01/0410/01/04 
32.4.32Continually review personnel requirements to sustain cancellation process according to market demand (P-05-01)10/01/0409/29/08 
32.5Post Grant Review: Implement Post Grant Rule Changes Phase 2 (P-05-01 and P-05-03)12/30/0207/15/05 
32.5.1Determine employees Post Grant/ACTS Interference Phase 2 functions and address labor relations implications (P-05-03)12/01/0305/03/04 
32.5.2Redesign support personnel PAP to include new e-mail/CD-ROM handling (P-05-03)12/01/0305/03/04 
32.5.3Draft proposed Phase 2 - ACTS Interference e-mail of non-confidential materials rules (P-05-03)08/09/0410/08/04 
32.5.4Submit proposed rules Phase 2 - ACTS Interference e-mail of non-confidential material to DoC for review (P-05-03)10/08/0411/08/04 
32.5.5Submit proposed Phase 2 - ACTS Interference e-mail of non-confidential material rules to OMB for review (P-05-03)11/11/0401/10/05 
32.5.6Review by Solicitor's Office (P-05-03)12/15/0412/30/04 
32.5.7Review by OGL (P-05-03)12/30/0201/07/04 
32.5.8Publish Phase 2 - ACTS Interference e-mail of non-confidential material rules (P-05-03)01/10/0501/17/05 
32.5.9Period for comments on Phase 2 - ACTS Interference e-mail for non-confidential materials rules (P-05-03)01/17/0502/14/05 
32.5.10Review comments and revise Phase 2 - ACTS Interference e-mail of non-confidential materials rules (P-05-03)02/16/0505/16/05 
32.5.11Submit revised Phase 2 - ACTS Interference e-mail of non-confidential material rules to OMB for review (P-05-03)05/17/0507/15/05 
32.5.12Review by Solicitor's Office (P-05-03)06/28/0507/11/05 
32.5.13Review by OGL (P-05-03)07/12/0507/14/05 
32.5.14Adopt/publish final Phase 2 - ACTS Interference e-mail of non-confidential material rules (P-05-03)07/15/0507/15/05 
32.5.15Implement final Phase 2 - ACTS Interference e-mail of non-confidential materials rules (P-05-03)07/15/0507/15/05 
32.6Post Grant Review: Implement Post Grant Rule Changes Phase 3 (P-05-01 and P-05-03)05/10/0406/01/06 
32.6.1aDraft proposed rules for Phase 3 full e-filing of interferences (P-05-03)05/10/0407/08/05 
32.6.1bDraft proposed rules for Phase 3 full e-filing of post grant (P-05-03)05/10/0507/08/05 
32.6.2aSubmit proposed Phase 3 full e-filing of interferences rules to DoC for review (P-05-03)07/08/0408/06/04 
32.6.2bSubmit proposed Phase 3 full e-filing of post grant rules to DoC for review (P-05-03)07/08/0508/08/05 
32.6.3aSubmit proposed Phase 3 Full e-filing of interferences rules to OMB for review (P-05-03)08/09/0410/08/04 
32.6.3bSubmit proposed Phase 3 Full e-filing of both: post grant and interferences rules to OMB for review (P-05-03)08/09/0510/10/05 
32.6.4Review by Solicitor's Office (P-05-03)09/15/0509/29/05 
32.6.5Review by OGL (P-05-03)09/30/0510/07/05 
32.6.6aPublish Phase 3 full e-filing of interferences rules (P-05-03)10/08/0410/15/04 
32.6.6bPublish Phase 3 full e-filing of post grant rules (P-05-03)10/10/0510/17/05 
32.6.7aPeriod for comments on Phase 3 full e-filing of interference rules (P-05-03)10/15/0411/15/04 
32.6.7bPeriod for comments on Phase 3 full e-filing of post-grant rules (P-05-03)10/17/0511/15/05 
32.6.8aReview comments and revise Phase 3 e-filing of interference rules (P-05-03)11/15/0402/15/05 
32.6.8bReview comments and revise Phase 3 e-filing of post-grant rules (P-05-03)11/15/0502/15/06 
32.6.9Redesign support personnel PAPs to include cancellations (P-05-03)02/01/0606/01/06 
32.6.10aSubmit revised Phase 3 full e-filing of interferences rules to OMB for review (P-05-03)02/15/0504/15/05 
32.6.10bSubmit revised Phase 3 full e-filing of post-grant rules to OMB for review (P-05-03)02/15/0604/17/06 
32.6.11Determine employees Post Grant/ACTS Interference Phase 3 functions and address labor relations implications (P-05-03)04/17/0604/17/06 
32.6.12Review by Solicitor's Office (P-05-03)03/28/0604/10/06 
32.6.13Review by OGL (P-05-03)04/11/0604/14/06 
32.6.14aAdopt/publish final Phase 3 full e-filing of interferences rules (P-05-03)04/15/0504/15/05 
32.6.14bAdopt/publish final Phase 3 full e-filing of post grant rules (P-05-03)04/15/0604/15/06 
32.6.15aImplement final Phase 3 full e-filing of interferences rules (P-05-03)04/15/0504/15/05 
32.6.15bImplement final Phase 3 full e-filing of post grant rules (P-05-03)04/15/0604/15/06 
32.7Post Grant Review and Post Grant Review Processing: Resource Management for Post Grant Review (P-05-01 and P-05-03)04/01/0509/06/06 
32.7.1Advertise Program and Resource Administrator position for BPAI (P-05-03)04/01/0505/31/05 
32.7.2Advertise APJ positions for the BPAI (P-05-01)04/01/0506/01/05 
32.7.3Advertise paralegal positions for the BPAI (P-05-01)04/01/0506/01/05 
32.7.4Provide special training to APJs re selected administrative law subjects (P-05-01)04/01/0506/01/05 
32.7.5Evaluate APJs applications (by OHR) (P-05-01)06/01/0506/15/05 
32.7.6Evaluate BPAI paralegal applications (by OHR) (P-05-01)06/01/0506/15/05 
32.7.7Evaluate program and resource administrator applications (by OHR) (P-05-01)06/01/0506/15/05 
32.7.8Panel APJs applications (P-05-01)06/15/0507/15/05 
32.7.9Panel BPAI paralegal applications (P-05-01)06/15/0507/15/05 
32.7.10Panel program and resource administrator applications (P-05-01)06/15/0507/15/05 
32.7.11Interview applicants for APJ positions (P-05-01)07/22/0508/05/05 
32.7.12Interview applicants for paralegal positions (P-05-01)07/22/0508/05/05 
32.7.13Interview applicants for program and resource administrator positions (P-05-01)07/22/0508/05/05 
32.7.14Selection of newly hired APJs (P-05-01)08/08/0509/06/05 
32.7.15Selection of newly hired paralegals (P-05-01)08/08/0509/06/05 
32.7.16Selection of newly hired program and resource administrator (P-05-01)08/08/0509/06/05 
32.7.17Advertise supporting paralegal positions for the SOL (P-05-01)04/03/0606/01/06 
32.7.18Advertise for SOL positions (P-05-01)04/03/0606/01/06 
32.7.19Evaluate SOL paralegal applications (by OHR) (P-05-01)06/01/0606/15/06 
32.7.20Evaluate SOL applications (by OHR) (P-05-01)06/01/0606/15/06 
32.7.21Panel SOL paralegal applications (P-05-01)06/15/0607/17/06 
32.7.22Panel SOL applications (P-05-01)06/15/0607/17/06 
32.7.23Interview applicants for SOL paralegal position (P-05-01)07/24/0608/07/06 
32.7.24Interview applicants for SOL positions (P-05-01)07/24/0608/07/06 
32.7.25Selection of newly hired SOL paralegals (P-05-01)08/08/0609/06/06 
32.7.26Selection of newly hired SOL (P-05-01)08/08/0609/06/06 
KEY: e Biz=online business system fees=fees forms=formshelp=help laws and regs=laws/regulations definition=definition (glossary)

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