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Tuesday May 15, 2012

Building a Better Post Grant

Guest blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Teresa Stanek Rea

Currently, the USPTO has two principal ways of challenging granted patents - inter partes reexamination and ex parte reexamination. Both of these are an examination performed in the Patent Examining Corps, specifically in the Central Reexamination Unit (CRU). Inter partes reexamination has not proven as efficient as was originally intended. It has taken an average of 32 to 38 months to move from filing to issuance of a final reexamination certificate. The time to a final determination within the USPTO is even longer, when you factor in appeals. To best serve the applicant community, Congress directed the Agency in the America Invents Act (AIA) to implement more efficient and timely alternatives to litigation.

On September 16, 2011, President Obama signed the AIA into law. It establishes three post grant proceedings conducted by the Board of Patent Appeals and Interferences (Board). These proceedings include post grant review, inter partes review and the transitional program for covered business method patents. The AIA also renames the Board as the Patent Trial and Appeal Board. 

The size and experience level of the Board is being significantly expanded to handle the new proceedings. The Board now has more than 120 judges, with many of the new members coming from outside the USPTO. Many of the new judges have considerable litigation and patent prosecution experience, augmenting the considerable examination experience of other judges. This Board is well positioned to handle the new contested cases. We at the USPTO are pleased to have fresh viewpoints and diverse experiences as we take on the challenges of the AIA. 

We are hard at work on the final rules concerning post grant procedures as we implement and fulfill Congress’ intent with the AIA. The need to provide an efficient way for the Board to reconsider granted patents is an important feature of the new law. The process desired by Congress is one that is efficient and cost-effective, and relies on expertise within the Agency to provide high-quality decisions. Congress also specifically limited the length of these new proceedings to 12 months, with an additional six months in exceptional cases. 

Our rulemaking is taking into consideration a wide variety of information, input, and experience. The experience and procedures used in Federal District Court litigation were considered as well as the experience and procedures in the CRU. We studied procedures used by other administrative agencies, such as the Board of Veterans’ Appeals, and the International Trade Commission. We actively engaged the user community in the rulemaking process. We discussed a wide range of procedures and recommendations from a variety of sources including associations, corporations, law firms and individuals.

The Board also has some direct experience in handling contested cases. Interference practice has a long history within the Agency, and the Agency evaluated those procedures in order to identify best practices. I have practiced in the interference area for many years, and watched the development of efficient trial proceedings take root at the Board. About 15 to 20 years ago, interferences took approximately four to seven years, costing stakeholders time while adding uncertainty. They allowed for dilatory practices, wasteful motions, and procedural traps. The process eventually was modified—much to its benefit—and is now a trial-like proceeding, streamlined by careful involvement of judges. The average interference today is completed in less than a year, approximately 11 months. We in the practice learned to trust the involvement of the judges in shepherding proceedings to a quick and efficient conclusion.

The team working on the rules consists of individuals with a balanced set of viewpoints. The Director, myself, and the Chief and Vice Chief of the Board have all practiced in firm and corporate settings, and are well aware of the needs and concerns of external stakeholders. We do not wish to retain any of the elements of an overly complex interference practice. We have started from scratch and take a fresh look in our rulemaking.

Post-AIA proceedings will be very different from reexamination proceedings or interferences. First, they must be completed within a year, which means streamlining. There will be no examination, no counts, no determination of priority, no complex procedures of inter partes reexamination, and no establishing priority of invention. Complex inter partes reexamination and interference practices will not return. We envision reaping the benefits of a straightforward trial proceeding, implemented by experienced judges, resulting in a fair and efficient proceeding.

The user community has provided diverse and, at times, contradictory recommendations on aspects of the rule implementation. We are diligently taking this information into consideration as we draft procedures that will provide high quality decisions that are clear and predictable. We aspire to present final rules which will accomplish Congress’ intent of efficiency and cost-effectiveness within a 12-month window. I appreciate the interest and helpful input of the entire user community.


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