Final Rules For Administrative Trials Published

This post was first published on 15th August, 2012.
The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) will publish final rules in the Federal Register, relating to implementation of three administrative trial provisions of the Leahy-Smith America Invents Act (AIA); inter partes review, post-grant review, and the transitional program for covered business method patents. The administrative trial final rules offer a third party a timely, cost-effective alternative to district court litigation for challenging the patentability of a claimed invention in an issued patent.
These rules become effective on September 16, 2012. The final rules for inter partes review and the transitional program for covered business method patents apply to any patent issued before, on, or after the September 16, 2012 effective date. However, the post-grant review final 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 Office is also publishing four separate notices in the Federal Register for the administrative trial final rules. The first notice sets forth general procedures common to the three different types of administrative trials, such as for evidentiary standards, discovery standards, sanctions for abuse of discovery, and motions to seal and protective orders.The second 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.
The third notice sets forth definitions for the terms “covered business method patent” and “technological invention” that the Board will use in conducting transitional covered business method patent review proceedings.The final notice presents a practice guide for the administrative trial final 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 final rules implementing provisions for inter partes review, post grant review, and the transitional program for covered business method patents in the America Invents Act establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “Moreover, the rules are designed to ensure the integrity of the trial procedures.”

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