IPO GROUP 2 RULES SURVEY

November 2, 2011

The USPTO has asked for pre-promulgation input from the patent community on the various Group 2 Rules packages that are listed on the AIA implementation microsite. This survey will ask for feedback from IPO Inter Partes committee members on certain issues for the topic areas as highlighted in the chart below. If you have comments or suggestions on other issues, or for the other topic areas, please use the feedback option at the end of the survey. If you do not have an opinion on a given question, you may leave that question unanswered.

Group 2 Rulemakings
Subject of Rule Making / Section of the AIA
1 / Inventor’s oath / declaration / 4
2 / Third party submission of prior art for a patent application / 8
3 / Supplemental examination / 12
4 / Citation of prior art in a patent file / 6
5 / Umbrella set of rules for contested case procedure / N/A
6 / Inter partes review / 6
7 / Post grant review / 6
8 / Transitional program for covered business methods / 18
9 / Definition of technological invention / 18
10 / Derivation proceeding / 3

3. Supplemental Examination Rules Package:

Supplemental Examination allows a patent owner to have the Patent Office review an issued patent with respect to additional references that are submitted in order to determine whether there is a need to initiate an ex parte reexamination with respect to those references. Using the Supplemental Examination process will immunize the patent and the patent owner from any future allegation of inequitable conduct with respect to the references submitted.

a.  For Initiating a Supplemental Examination, should there be:

  1. A base fee similar to ex parte reexamination fees to review up to given number of references (e.g., 20 references), plus a per reference charge for any references above that given number, with no requirement for the patent owner to do anything more than merely identify the references on a PTO-1449 Information Disclosure Statement (IDS) form; or
  2. A fee similar to accelerated examination fees for an unlimited number of references, but with a requirement that the patent owner submit a document similar to the Examination Support Document (ESD).
  1. After the initial determination in a Supplemental Examination, should there be:
  2. An additional fee charged similar to the ex parte reexamination fee if a decision is made to initiate an ex parte reexamination; or
  3. A refund of a portion of the initial fee if a decision is made not to initiate an ex parte reexamination.
  1. After the initial determination in a Supplemental Examination to initiate an ex parte reexamination, should there be:
  2. An opportunity for the patent owner to submit a patent owner statement as is now provided in an ex parte reexamination; or
  3. An automatic waiver of the patent owner statement.

5. Umbrella Rules Package:

The Office is proposing to use a common set of umbrella rules to govern the general procedures and practice for all kinds of review proceedings - Inter Partes Review (IPR), Post Grant Review (PGR) and Business Method Review (BMR) - that will be conducted by the Trial Section of the Patent Trial and Appeal Board (PTAB), formerly the Board of Patent Appeals and Interferences (BPAI). These procedures and practice will cover the manner in which reviews are conducted, including discovery, motion practice, conferences, hearings, rehearings, appearances, and sanctions. Currently, the rules for the BPAI are found primarily in 37 CFR 41 et. seq. In particular, there is a relatively little-known section of the BPAI rules (Section 41.100 et seq.) that already provides for certain rules with respect to so-called “contested matters.” These rules was originally promulgated along with rule changes to interference practice in 2004 for the purpose of covering any kinds of future “contested matters” like the various kinds of review proceedings that have been created by the America Invents Act (AIA).

a.  For the set of umbrella rules governing the general procedures and practice for reviews as Trial Section proceedings run by the PTAB, the Office should use:

  1. An updated version of the contested matter rules found in 37 CFR §41.100 et seq that provide for (1) an initial motion practice period to define the scope of the proceeding, (2) use of the FRE, (3) limited discovery only as authorized by motion, (4) initial testimony by written declaration, (5) cross-examination and redirect by deposition, (6) final oral hearing, (7) an opportunity to request rehearing, and (8) sanctions that can include dismissal of proceeding; or
  2. A version of the rules used for trademark oppositions found in 37 CFR §2.101 et seq. that provide for (1) an initial period to answer the official notice of opposition, (2) a mandatory pre-discovery conference to discuss discovery issues and possible settlement, (3) a period for discovery under the FRCP, including service of written interrogatories, requests for productions of documents, and requests for admissions on the other party. Upon receipt of the discovery requests, (4) a period for taking testimony, where each party its testimony through depositions, the written record of which is then submitted to the TTAB, (5) a period in which each party submits a brief setting forth its arguments and files a reply brief to the other parties arguments, (6) final oral hearing, (7) an opportunity to request rehearing, and (8) sanctions that can include dismissal of proceeding; or
  3. A new set of rules based on a combination of the contested matter and trademark opposition rules; or
  4. A new set of rules more like court litigation rules and not based on any of the current sets of rules for contested matters or trademark oppositions; or
  5. A new set of rules more like ITC proceeding rules and not based on any of the current sets of rules for contested matters or trademark oppositions; or
  6. A new set of rules more like patent prosecution rules and not based on any of the current sets of rules for contested matters or trademark oppositions.

b.  Should the Office require participants in an IPR/PGR/BMR Trial Section proceeding to use electronic filing and electronic service of all other parties?

  1. YES; or
  2. NO.

c.  Should the Office use a Standing Order in addition to CFR Rules to manage Trial Section proceedings? (Standing Orders are similar to local district court rules setting out default time frames and other logistical issues that will be applied to the proceeding are used in current interference practice in addition to the actual order by an APJ that outlines the basis on which the interference has been initiated and establishes the key dates for such time frames that are unique to that proceeding)

  1. YES; or
  2. NO.

d.  When establishing standards under 316(a)(2)/326(a)(2) for showing of sufficient grounds for initiating a IPR/PGR/BMR, the Office should use:

  1. A version of the “new non-cumulative technological teaching” standard currently used for determining whether there is a “substantial new question” for initiating an ex parte reexamination; or
  2. A standard based on whether there is legal or technical issue presented that was not previously presented during original prosecution or during another previously concluded post issuance proceeding; or
  3. A standard based on whether there is a legal or technical issue presented, regardless of whether that issue had previously been presented during original prosecution or during another previously concluded post issuance proceeding.

e.  When deciding whether to initiate a IPR/PGR/BMR, the determination should be delegated by the Director to be made by:

  1. The Central Reexam Unit (CRU) without review by an Administrative Patent Judge (APJ) at the PTAB; or
  2. Only by an APJ at the PTAB; or
  3. By an APJ at the PTAB after consideration and review of a recommendation prepared by the CRU.

f.  When a petition for initiating a IPR/PGR/BMR proceeding is denied by the Director, the decision to deny should:

  1. Not be reviewable on petition; or
  2. Be reviewable on petition to the Director under conditions similar to the current 37 C.F.R. § 1.927; or
  3. Be reviewable on petition to the Director under other conditions established in a new rule; or
  4. Be reviewable on petition to the PTAB.

g.  When a determination is made to initiate a IPR/PGR/BMR based on a petition that has been filed, the scope of the review should:

  1. Apply to the entire patent, including all claims and any references raised in the petition or authorized to be added during the proceeding; or
  2. Only those claims actually challenged in the petition for which the Office determines that the petition meets the relevant “reasonable likelihood of prevailing” (RLP) or “more likely to prevail than not” (MLPTN) standard for each of those claims; or
  3. All claims actually challenged in the petition so long as the petition shows the relevant RLP or MLPTN standard is met for at least one of the challenged claims; or
  4. Only those claims actually challenged in the petition for which the Office determines that the petition meets the relevant RLP or MLPTN standard, and then only based on the grounds for challenge that are presented in the motion or authorized during the proceeding.

h.  The patent owner has a statutory right to one opportunity to amend or substitute claims. How should the petitioner be permitted to introduce new grounds of rejection in response to such a substitution/amendment of claims pursuant to 316(d)/326(d)?

  1. The petitioner should have an unrestricted right to introduce new grounds of rejection in response to amendments to the claims by the patent owner; or
  2. The petitioner should have an restricted right to introduce new grounds of rejection in response to amendments to the claims by the patent owner only if authorized by motion practice; or
  3. The petitioner should have no right to introduce new grounds of rejection in response to amendments to the claims by the patent owner.

i.  With respect to claim construction in a Trial Section proceeding, the Office should:

  1. Never undertake a separate claim construction; or
  2. Only perform claim construction if authorized by motion; or
  3. Always undertake a claim construction.

j.  With respect to discovery and witness testimony in a Trial Section proceeding, the Office should:

  1. Allow fact witness and expert witness testimony during a single discovery period; or
  2. Allow for separate discovery periods for fact witnesses and expert witnesses only if authorized by motion; or
  3. Always provide for separate discovery periods for fact witnesses and expert witnesses.

k.  With respect to live testimony during a Trial Section proceeding, the Office should:

  1. Never allow live testimony; or
  2. Allow for limited cross-examination and redirect of live testimony only if authorized by motion; or
  3. Always allow for live testimony at the final hearing.

l.  With respect to rebuttal evidence during a Trial Section proceeding, the Office should:

  1. Never permit additional rebuttal evidence after the close of a discovery period; or
  2. Allow for rebuttal evidence only if authorized by motion; or
  3. Always allow for rebuttal evidence up to the final hearing.

m.  With respect to motion and briefing papers during a Trial Section proceeding, the Office should:

  1. Establish strict page/word count limits; or
  2. Establish page/word count limits, but allow parties to move for authorized increase in such limits; or
  3. Use fee setting authority to charge for pages/word counts and/or number of proposed grounds above a certain minimum; or
  4. Have no page count/word limits in view of the strict estoppel provisions for the review proceedings.

n.  To ensure that Trial Section proceedings are finished in the statutory deadline of 12 months after the initiation of a proceeding, or the optional extension period of 6 months, the Office should:

  1. As part of a request to extend the proceeding in the extension period of 6 months, eliminate any further options for motion/discovery, set a firm PTAB hearing date and eliminate any option for rehearing of PTAB decision such that the first PTAB decision will be a final written decision by PTAB under 318(a)/328(a); or
  2. Set schedules for the Trial Section proceedings that work to an initial PTAB decision within 9 months after the initiation of the proceeding; or
  3. Set firm discovery deadlines and not permit introduction of evidence that was not produced prior to the discovery deadlines.

o.  How should the Office interpret the window for settlement of before “the Office has decided the merits of the proceeding” under 317(a)/327(a) as being equivalent to the final written decision under 318(a)/328(a)?

  1. Interpret the settlement window for a Trial Section proceeding as being consistent with the estoppel provision so as to provide the longest opportunity for the parties in considering settlement up to the final written decision by the PTAB; or
  2. Interpret the settlement window as terminating as of the first written decision by the PTAB on all matters, but not the final written decision after options for requests for rehearing, if available to encourage settlement before there is any complete decision by the PTAB; or
  3. Interpret the settlement window as terminating as of the very first written decision by the PTAB on any motion to have a short window for settlement and therefore encourage early settlement and not provide an opportunity for settlement after the proceeding has passed the point when motions are being ruled upon.

p.  How should the Office address the treatment of settlements in IPR/PGR and derivation situations where there is a merger of Trial Section proceedings?

  1. The IPR/PGR proceeding(s) should be dropped and the merged proceeding should be converted back into a pure derivation proceeding. This clarifies the impact and potential estoppel associated with the Office’s decision; or
  2. The derivation proceeding should be dropped and settlement should be handled under IPR/PGR. This approach of using IPR/PGR instead of derivation is consistent with the section of the AIA authorizing interferences to be converted into IPR/PGR proceedings.

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6. Inter Partes Review (IPR) Specific Rules Package

a.  With respect to fees for an IPR, the Office should:

i.  Charge a combined fee (part of fee for review of petition and part of fee for running the proceeding), and then refund the portion of the fee for running the proceeding if an IPR is not initiated; or