America Invents Act Final Rules: Practicing Before the Board and Post-Grant Proceedings

The Leahy-Smith America Invents Act (“AIA”) establishes several new post-grant trial proceedings to be conducted by the Patent Trial and Appeal Board (“Board”), including inter partes review (“IPR”), post-grant review (“PGR”), and the Transitional Program for Covered Business Method Patents (“TCBM”), and also provides for derivation proceedings. On August 14, 2012, the U.S. Patent and Trademark Office (“USPTO”) issued final rules governing these proceedings and practice before the Board. Specifically, the USPTO issued the following four notices that relate to these procedures and cover related topics:

• Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions (77 Fed. Reg. 48612, Aug. 14, 2012);
• Office Patent Trial Practice Guide (77 Fed. Reg. 48756, Aug. 14, 2012);
• Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents (77 Fed. Reg. 48680, Aug. 14, 2012); and
• Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention (77 Fed. Reg. 48734, Aug. 14, 2012)

Practicing Before the Board—Final Rules and Trial Practice Guide

The rule package entitled “Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions” provides a consolidated set of rules relating to trial practice before the Board for IPR, PGR, the TCBM, and derivation proceedings. This package sets forth, among other things:

1. the evidentiary standards, procedures, and default times for conducting proceedings;
2. the fees;
3. the procedures, including page limits, for petition and motion practice;
4. the standards and procedures for discovery of relevant evidence, including testimony;
5. the sanctions for abuse of discovery, abuse of process, or any other improper use of the proceedings;
6. the procedure for requesting oral hearings;
7. the procedures for requesting rehearing of decisions and filing appeals;
8. the procedure for requesting joinder; and
9. the procedures to make file records available or unavailable to the public, including motions to seal, protective orders for confidential information, and requests to treat settlement as business confidential information.

This package also provides a consolidated set of rules to implement the provisions of the AIA related to seeking judicial review of Board decisions.

Concurrently, the USPTO published a practice guide entitled “Office Patent Trial Practice Guide” to advise the public on the general framework of the procedures and the governing regulations, including the structure and times for taking action in each of the new proceedings.

Inter Partes, Post-Grant, and Covered Business Method Patent Review—Final Rules

In addition to providing rules for practicing before the Board, the USPTO also issued a rule package entitled “Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents.” This package provides rules related specifically to IPR, PGR, and the TCBM. For instance, this package sets forth, among other things:

1. the requirements for a petition and standards for instituting one of these proceedings;
2. the procedures for conducting these proceedings that permit a patent owner response, a submission of written comments, and an oral hearing;
3. the standards and procedures for discovery and for the patent owner to move to amend the patent; and
4. the time periods for completing the proceeding.

Covered Business Method and Technological Invention Definitions—Final Rules

The USPTO also issued a rules package entitled “Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention.” This package provides the rule that sets forth the definitions of the terms ‘‘covered business method patent’’ and ‘‘technological invention’’ as required by the AIA. Specifically, section 18 of the AIA provides that the USPTO may institute what has been referred to as the Transitional Program for Covered Business Method Patents or TCBM. Section 18(d)(1) specifies that a “covered business method patent” is “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions,” and section 18(d)(2) requires the USPTO to issue regulations for determining whether a patent is for a technological invention.

Consistent with these statutory provisions, the USPTO issued this rules package to set forth the definitions of the terms ‘‘covered business method patent’’ and ‘‘technological invention.’’ Specifically, 37 C.F.R. § 42.301(a) defines “covered business method patent” in the same way as the statute. As for “technological invention,” section 42.301(b) states that, “[i]n determining whether a patent is for a technological invention . . . , the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.”