Must IPRs Be Filed on a Weekend/Holiday to Meet the Requirements of 315(b)?

Petitioners seeking Inter Partes Review (IPR) must be mindful of the statutory bar of 35 U.S.C. § 315(b). This provision precludes IPR from being instituted for a patent in which the petitioner was served with a complaint of infringement more than one year prior to the petition filing. The rationale for the statutory bar of 315(b) is straightforward. That is, IPR was designed to be a true alternative to patent litigation, not an adjunct process that was typical of the inter partes patent reexamination proceeding it replaced. By mandating that an IPR filing be brought earlier in the litigation timeline, Congress hoped to avoid duplicative proceedings, avoid patentee harassment, and enhance the ability of the Patent Trial & Appeal Board (PTAB) to provide a timely resolution to such business disputes.

The time-limit language of 315(b) mandates denial of any petition filed "more than one year" after service of a complaint.  Nevertheless, the USPTO will routinely accept petitions filed more than one year after service of a complaint if the one year anniversary falls on a weekend or holiday. In such cases, the time to file is extended until the next USPTO business day. However, taking advantage of this weekend/holiday extension may prove risky in the electronic age. 

37 C.F.R.§ 1.7 is the USPTO rule that provides for weekend/holiday deadline extension. In the case of the 315(b) bar, this rule permits an IPR petition to be filed more than one year after service of a complaint for infringement of the subject patent if the one-year anniversary of the complaint filing falls on a weekend or holiday. The Rule states:

Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or by or under this part for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding business day which is not a Saturday, Sunday, or a Federal holiday. See § 1.304 for time for appeal or for commencing civil action.

(emphasis added)

But, if challenged, can the USPTO appropriately justify exension of the 315(b) deadline of not "more than one-year?" 

The weekend/holiday extension of Rule 1.7 has its roots in the business hours of the USPTO.  That is, when the rule was originally written, the USPTO did not accept electronic filings, and did not accept paper filings on weekends or holidays. With the advent of electronic filings, the USPTO can now accept electronic filings 24 hours a day, 7 days a week.  Indeed, PTAB trial proceedings must be initiated and conducted, by rule, via electronic filing (authorization must be obtained to file in paper).  Some would argue that Rule 1.7 is antiquated, and allows arbitrary extension of the 315(b) bar based on "luck of the draw." 

The application of Rule 1.7 in the electronic age may present an opportunity for mischief akin to the recent decision in Immersion Corp. v. HTC Corp. (D.Del 2015). In Immersion the district court did not honor a continuation filing that was made the day a patent issued since it could not be "filed before patenting" (i.e., co-pending) as required by statute (35 U.S.C. § 120). This was despite the PTO's well-established practice under 37 C.F.R. § 1.78, and explicit endorsement of such filings in the MPEP. While Immersion is particular to the language of 35 U.S.C. § 120 ("before patenting"), the holding amplifies that PTO rules and well-established practices will be ignored if found to be in conflict with a statute.  

At present, once an IPR is instituted, any dispute over timeliness of the petition would be barred from appeal to the Federal Circuit.  Yet, keep in mind that Cuozzo could overturn that appeal bar in the short term.  Also, a mandamus challenge might be another route to raise the arbitrary nature of a Rule 1.7 challenge in the context of the PTAB's pure electronic filing environment.   

Given the evolution of electronic workflow, IPR petitions that take advantage of the Rule 1.7 extension may risk unnecessary controversy going forward.