July 2012 Issue

Proposed Rules of Procedure for USPTO Contentious Proceedings


In preparation for these new proceedings, the United States Patent and Trademark Office (USPTO) has proposed regulations that are intended to streamline the issues for decision in order to conduct proceedings in a timely, fair, and efficient manner.1   This article summarizes a “Practice Guide for Proposed Trial Rules” published by the USPTO.  77 Fed. Reg. 27 (Feb. 9, 2012).

As currently proposed, the proceedings may be instituted with the filing of a petition that meets certain requirements unique to each proceeding.  While claim charts are not required, the proposed regulations encourage petitioners to provide claim charts with their petitions.  It is envisioned that claim charts will help to streamline the process of identifying key features of a claim and comparing those features with specific evidence in a clear, succinct manner.  It is anticipated that the Board will streamline issues for final decision by only authorizing proceedings on those challenged claims where the petition is able to establish the necessary threshold requirements.  If the Board decides to institute a particular proceeding, it will issue a decision to that effect and concurrently enter a Scheduling Order.

The proposed regulations then suggest that an initial conference call will be held approximately one month from the date of institution of a proceeding to discuss the motions that the parties intend to file and to determine if any adjustment needs to be made to the Scheduling Order.  Further, the proposed regulations suggest that the Board may preliminarily require a list of proposed motions to be filed no later than two business days prior to the initial conference call so that the parties can plan for the call.  The proposed regulations contemplate that the conference call will help the Board and counsel adjust the schedule for taking action, to permit the Board to determine whether the listed motions are necessary and sufficient to resolve the issues raised, and to reveal the possibility that there may be a dispositive issue that may aid in the settlement of the proceeding.  In IPR and PGR, the patentee is likely to be given an opportunity to file a preliminary response to the petition within two months of the grant of the filing date.  The patentee also may move to amend the patent, but regulations propose that only one such motion will be allowed, and the motion should be raised during a conference call with the Board.

As currently proposed, the discovery process at the Board is likely to be a sequenced discovery process.  It is contemplated that each party will be provided a discovery period, with the patentee going first.  The goal of this sequenced discovery process will be to allow the parties to conduct meaningful discovery before motions and oppositions are filed.  Additionally, cross-examination of a declarant may be ordered to take place in the presence of an administrative patent judge, particularly where the Board considers the demeanor of a witness critical to assessing credibility.  Credibility may be particularly important when derivation or inequitable conduct is at issue or when testimony is given through an interpreter.

Further, the proposed regulations indicate that each party, upon request, will be afforded an opportunity to present oral argument before at least three members of the Board.  The proposed regulations suggest that parties are encouraged to avoid using elaborate demonstrative exhibits, but that a handout or binder containing demonstrative exhibits can be helpful.  The Board will enter a final written decision not more than one year from the date a proceeding is instituted, unless a good-cause extension of six months is made.

The Practice Guide provides not only a good summary of the contentious proceedings but also some tips on how to draft effective petitions, motions, oppositions, and replies.  Since all of these writings are subject to page limits in a further effort to streamline the proceedings, the USPTO suggests that parties focus on simple, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.  The USPTO also reminds parties that judges of the Board are familiar with the general legal principles of patent law, so extended discussions on this topic are not necessary.

Overall, the UPSTO’s proposed rules give parties wide latitude in how they present their cases and include several measures that demonstrate an effort to streamline the proceedings.  The USPTO’s Practice Guide provides several interesting insights on how to best make use of the newly created contentious proceedings.

1 Final rules are expected to be published by August 16, 2012.