The U.S. Patent and Trademark Office (USPTO) has issued a number of final rules that establish new procedures under the America Invents Act (AIA). According to USPTO Director David Kappos, “These final rules help achieve a 21st century patent system.” They complete all of the patent process rules that USPTO was required to adopt under the patent reform law before August 16, 2012.
Changes to implement the AIA’s supplemental examination provisions and to revise reexamination fees take effect September 16 and apply to “any patent issued before, on, or after” that date. Changes addressing the inventor’s oath or declaration, which USPTO claims will offer “applicants more flexibility when filing their applications,” also take effect September 16.
Final rules for inter partes review, post-grant review and the transitional program for covered business method patents were published as a package but have different effective dates. Post-grant review rules “apply to patents issuing from applications subject to the first-inventor-to-file provision of the AIA, which does not become effective until March 16, 2013.” The final rules for inter partes review and the transitional program for covered business method patents, however, “apply to any patent issued before, on, or after the September 16, 2012, effective date.”
USPTO’s final rules of practice for trials before the Patent Trial and Appeal Board and judicial review of Patent Trial and Appeal Board decisions also take effect September 16 and apply to “Board trial practice for inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings.” This notice “sets forth specifics for the three different trial proceedings, including: (1) the requirements for a petition to institute the particular type of review; (2) the standards for showing sufficient grounds to institute the particular review; (3) the standards for instituting the particular review; (4) the procedures for conducting the particular review that permits a patent owner response, a submission of written comments, and an oral hearing; (5) the standards and procedures for discovery and for the patent owner to move to amend the patent; and (6) the time periods for completing the review.”
As to these rules, Kappos said, “[they] establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs [and] are designed to ensure the integrity of the trial procedures.”
Definitions for the terms “covered business method patent” and “technological invention” are included in a separate notice. The Board will use these definitions in conducting transitional covered business method patent review proceedings. According to the notice, under the AIA, this provision and its implementing regulations take effect September 16, but they will be automatically repealed on September 16, 2020, “with respect to any new petitions under the transitional program.”
And finally, USPTO has published a practice guide for the final trial rules “to advise the public on the general framework of the regulations, including the structure and times for taking action in each of the new proceedings.” The practice guide “applies to inter partes review, post-grant review, and covered business method patent review proceedings commencing on or after September 16, 2012, as well as derivation proceedings commencing on or after March 16, 2013.” See Federal Register, August 14, 2012.