Final Rules Modified to Address Most Common Criticisms

Yesterday’s printing of the final rules to implement the post grant patent proceedings of the AIA is the culmination of well over a years worth of intensive, and tireless effort by the USPTO. The effort throughout 2011 led to the presentation of the proposed rules in February of 2012. Thereafter, the USPTO accepted public comments in April, issuing the final rules yesterday.

As to the public feedback on the proposed rules, it seems the USPTO was listening.

Rather than simply go through the laundry list of changes, some of which are fairly ministerial, I will first address the aspects of the proposed rules that I found to be the most problematic, these were:

Page Limits

The final rules have increased page limits by 10 pages for all PTAB proceedings. Specifically, Inter Partes Review (IPR) will have a 60 page limit for petitions, preliminary responses, and patent owner response. Post Grant Review (PGR), and Transitional Program for Covered Business Method Patents (TPCBMP) will use an 80 page limit for same filings. Additionally, the Office will allow claim charts to be single spaced, effectively halving page space taken up for this information.

While the increase in page count is helpful, the 14 point font requirement remains. For those challengers that have no choice but to proceed against all claims of a patent, the page count will continue to be an issue, and will likely lead to the splitting up of petitions. It does not appear that the page count has been adjusted for those petitions that seek to challenge greater than 20 claims. That is to say, the same page count is accorded for challenging 20 claims or 100 claims. I was hoping that this incongruity would be addressed.

Fee Structure

The basic fees have not changed in any significant regard. $27,200 for IPR and $35,800 for PGR and TPCMBP. The main change as to fees is that the escalating structure has been dropped in place of a simple, flat fee. So, for every claim over the 20 claim limit, an additional $600 is due for IPR, and $800 for PGR/TPCBMP. This solution makes much more sense than the original proposal. I was more in favor of a rejection based fee structure, but, the final rule provides a reasonable compromise between the competing models.

As I pointed out a week back, the filing fees will be split into stages. A first portion due upon filing of the petition, and a second, once the proceeding is instituted. However, this change will be addressed in the forthcoming fee changes issued under Section 10 of the AIA.

Patentee Estoppel

To me, the patentee estoppel of the proposed rules was a very significant problem. As such, I was quite pleased to see the proposal effectively dropped. That is to say, no longer will a Patentee be precluded from later raising a claim that “could have been raised” in the PTAB proceeding in a subsequent USPTO proceeding (such as a pending continuation). Instead, this provision now precludes only claims of a subsequent patent that are not patentably distinct from a finally refused or cancelled claim.

Supplemental Information

This provision has been tightened up to require a showing (in the interest of justice) for submissions presented after the first month of the proceeding. Also, where the proposed rule required the information to be relevant to a “ground” for which the trial was instituted, the final rule requires the information to be relevant to a claim at issue in the proceeding.

Still, if a challenger seeks to present supplemental information within one month, perhaps to address a potential weakness pointed out in a Patentee preliminary response, no showing is necessary. Accordingly, I am still quite wary of this provision and believe it may have a chilling effect on preliminary responses of patentees.

I will discuss the balance of the changes in the days to come.