Fast And Furious (Toward Patents): USPTO Issues Final Post-Grant Rules

On August 14, 2012, the United States Patent and Trademark Office (USPTO) published its final rules for the new post-grant proceedings established last September by the America Invents Act (AIA). The final rules include changes made since the USPTO issued its proposed rules earlier this year. When the final rules take effect on September 16, 2012, it will usher in a new model, as envisioned by the AIA, for challenging patents. These final rules should encourage many wary companies with good prior art to take the plunge and give inter partes review a try.

In particular, the new inter partes review procedure is designed to be faster than inter partes reexamination. The USPTO confirmed that it will abide by the statutory timeline for resolving these cases in one year. Moreover, the new procedure is designed to be more procedurally favorable and cost effective than patent litigation for addressing invalidity based on patents and printed publications. The rules suggest that discovery in inter partes review proceedings will be limited, alleviating fears by some that the new USPTO trial procedures might end up resembling district court litigation in cost and complexity.

The final rules (links set forth at the end of the article) address the following new post-grant proceedings in detail:

Inter partes review; Post-grant review; Post-grant review for covered business method patents; and Supplemental examination. Only patents filed on or after March 16, 2013, will be eligible for post-grant review, while inter partes review and post-grant review for covered business method patents will be employed as of September 16, 2012. Thus, this alert highlights certain final rules for inter partes review and post-grant review of covered business method patents. Please watch for additional alerts, webinars (including a client webinar on August 29), and seminars from Morrison & Foerster to cover other aspects of the final rules. More information can be found at our patent reform landing page: http://www.mofo.com/patent-reform/ .

INTER PARTES REVIEW: FAST

One of the most repeated criticisms of inter partes reexamination is its duration. An inter partes reexamination can take more than five years to complete, thereby undermining its statutory purpose as an alternative to litigation. The AIA seeks to address this issue by replacing inter partes reexamination with inter partes review on September 16, 2012, and statutorily requiring inter partes review to be completed within one year after institution by a Patent Trial and Appeal Board (Board). The final rules have sought to implement this statutory vision as reflected in the representative timeline below (reproduced from the USPTO's "Office Patent Trial Practice Guide," which is part of the final rules package).

This timeline illustrates a mix of statutory requirements and USPTO rules to complete inter partes review within 18 months after the filing of a petition. For example, the AIA allows a preliminary response to the petition from the patent owner, but it does not limit the time period for the response.1 The final rules fill this gap by setting a three- month time period for response, as shown.2 The AIA requires that the USPTO then make a decision on the petition within three months after any preliminary response. The final rules accordingly envision the process taking a total of six months, from the filing of the petition to the institution of review.

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