USPTO Issues Advance Notice of Proposed Rulemaking for America Invents Act (AIA) Proceedings Before the Patent Trial and Appeal Board
Seeking public input regarding discretionary institution practices, petition word limits, and settlement practices
On April 20, 2023, the United States Patent and Trademark Office (USPTO) published an Advance Notice of Proposed Rulemaking (ANPRM) in the Federal Register, seeking public input regarding proposed changes to discretionary institution practices, petition word limits, and settlement practices for America Invents Act (AIA) proceedings before the Patent Trial and Appeal Board (PTAB).
The USPTO is soliciting comments regarding a range of proposals that relate to the rules the Director, and by delegation the PTAB, will use in exercising discretion to institute inter partes reviews (IPR) and post-grant reviews (PGR) under 35 U.S.C. §§ 314(a), 324(a), and 325(d). The USPTO is also soliciting comments regarding proposals that would allow petitioners to pay additional fees for higher petition word count limits, provide a separate briefing process for discretionary institution arguments, and clarify that parties that settle prior to institution must file copies of any settlement agreements with the PTAB.
The changes under consideration build on and codify existing precedent and guidance on Director’s discretion to determine whether to institute an IPR or PGR. Among other things, the changes under consideration provide that, in certain circumstances in which specific elements are met (and applicable exceptions do not apply), the Director, and by delegation the PTAB, will exercise the Director’s discretion and will deny institution of an IPR or PGR.
The USPTO is also considering, for example, broadening the types of relationships between petitioners and other entities the USPTO will consider when evaluating discretionary denials to ensure that entities related to a party in an AIA proceeding are fully evaluated with regard to conflicts, estoppel provisions, and other aspects of the proceedings. The USPTO is also considering whether, in certain circumstances, challenges presenting “compelling merits” will be allowed to proceed at the PTAB even where the petition would otherwise be a candidate for discretionary denial.
In addition, the USPTO is considering whether to promulgate discretionary denial rules to ensure that certain for-profit, non-competitive entities do not use the IPR and PGR processes in ways that do not advance the mission and vision of the USPTO to promote innovation or the intent behind the AIA.
Recognizing the important role the USPTO plays in encouraging and protecting innovation by individual inventors, startups, and under-resourced innovators who are working to bring their ideas to market, the USPTO is considering limiting the impact of AIA post-grant proceedings on such entities by denying institution when certain conditions are met. The USPTO is seeking input on how it can protect those working to bring their ideas to market, while not emboldening or supporting economic business models that do not advance innovation.
The USPTO is also seeking input on serial and parallel petition practice.
Comments on the ANPRM will be accepted through June 20, 2023. Absent extenuating circumstances, the USPTO does not anticipate extending the deadline. Those who miss the deadline will have an additional opportunity to submit comments during the next stage of rulemaking. All comments must be submitted in writing through the Federal eRulemaking Portal at www.regulations.gov.
The USPTO will hold an information session with Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal to discuss the ANPRM on May 9, 2023, from noon to 1 p.m. ET.
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