The PTAB Affords Instant Late-Night Filing Dates—Sometimes

On a fall Sunday at midnight last year, the USPTO introduced a new electronic filing and case management website for the AIA’s new post-grant proceedings. According to 37 C.F.R. § 42.6(b), all submissions to the Patent Trial and Appeal Board (“Board”) must be made electronically via the Patent Review Processing System (“PRPS”), absent special leave. With it, parties can receive weekend filing dates. PRPS’ theoretical 24-hour availability means if a statutory deadline falls on a Saturday, it is safer for the party to file that day because the PRPS system is available. Yet with a little over a year of experience with the system, problems persist. The most recent problem concerns PRPS-assigned filing dates.

The PTAB addressed an improper filing date accorded a patentee’s motion to amend. CBS Interactive, Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 49 (June 21, 2013). The patent owner filed a motion to amend at 11:00 PM on the stipulated due date, June 7, 2013. The Filing Courtesy Notice properly reflected this timely filing; however, the PRPS main log improperly recorded a filing date of June 8, 2013. The petitioner noted the discrepancy and brought it to the attention of the PTAB. The PTAB remarked “the PRPS is a new electronic filing system, which sometimes records the next day as the filing date when the document is filed near the end of the day (e.g., 11 p.m.).” Appreciating this technical shortcoming, the PTAB properly awarded the patent owner the timely filing date, allowing the motion to proceed.

An expedited timeline is undoubtedly one of the virtues of the new post-grant proceedings. To ensure expediency, the Board requires parties to comply with strict deadlines. For example, a patent owner has three months to file a preliminary response to any submitted petition. Inter Partes Review, USPTO, http://www.uspto.gov/aia_implementation/faqs_inter_partes_review.jsp (last viewed Nov. 15, 2013). Similarly, a petitioner must file an IPR petition within one year of receiving a complaint of infringement. 35 U.S.C. § 315(b). With little room for flexibility—a party may request, at most, a one-day extension for problems electronic filing on Board-established rules—a document’s PRPS-assigned filing date is crucial. See 77 Fed. Reg. at 48,758 (“[I[f a problem with electronic filing arises during normal business hours a party may contact the Board and request a one-day extension of time for due dates that are set by rule or orders of the Board.”) (citing 37 C.F.R. § 42.5).

As with anything new, PRPS’ technical problems linger. The PTAB, however, seems to understand the current challenges and has reacted accordingly. In the meantime, parties should keep clear records of all filing dates and times and leave enough time to accommodate possible technical difficulties.