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Inter Partes, Post Grant, and Covered Business Method Review

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Inter Partes, Post Grant, and Covered Business Method Review Vol. 77 Tuesday, No. 157 August 14, 2012 Part III Department of Commerce Patent and Trademark Office 37 CFR Part 42 Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents; Final Rule VerDate Mar<15>2010 17:22 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00001 Fmt 4717 Sfmt 4717 E:\FR\FM\14AUR3.SGM 14AUR3 sroberts on DSK5SPTVN1PROD with RULES 48680 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations DEPARTMENT OF COMMERCE (Pub. L. 112–29, 125 Stat. 284 (2011)). covered business method patent; (2) the The purpose of the AIA and this final standards for showing of sufficient Patent and Trademark Office rule is to establish a more efficient and grounds to institute a post-grant review streamlined patent system that will of a covered business method patent; (3) 37 CFR Part 42 improve patent quality and limit the standards for instituting a post-grant [Docket No. PTO–P–2011–0083] unnecessary and counterproductive review of a covered business method litigation costs. The preamble of this patent; (4) the procedures for RIN 0651–AC71 notice sets forth in detail the procedures conducting a post-grant review that by which the Board will conduct inter permits a patent owner response, a Changes to Implement Inter Partes partes review proceedings, post-grant submission of written comments, and an Review Proceedings, Post-Grant review proceedings, and transitional oral hearing; (5) the standards and Review Proceedings, and Transitional post-grant review proceedings for procedures for discovery and for the Program for Covered Business Method covered business method patents. The patent owner to move to amend the Patents USPTO is engaged in a transparent patent; and (6) the time periods for AGENCY: United States Patent and process to create a timely, cost-effective completing the review (subpart D of 37 Trademark Office, Commerce. alternative to litigation. Moreover, the CFR part 42). rules are designed to ensure the Costs and Benefits: This rulemaking is ACTION: Final rule. integrity of the trial procedures. See 35 not economically significant, but is SUMMARY: The United States Patent and U.S.C. 316(b), as amended, and 35 significant, under Executive Order Trademark Office (Office or USPTO) is U.S.C. 326(b). This final rule would 12866 (Sept. 30, 1993), as amended by revising the rules of practice to provide a set of rules relating to Board Executive Order 13258 (Feb. 26, 2002) implement the provisions of the Leahy- trial practice for inter partes review and Executive Order 13422 (Jan. 18, Smith America Invents Act (‘‘AIA’’) that proceedings, post-grant review 2007). create the new inter partes review proceedings, and transitional post-grant Background: To implement sections 6 proceeding, post-grant review review proceedings for covered business and 18 of the AIA, the Office published proceeding, and transitional post-grant method patents. the following notices of proposed review proceeding for covered business Summary of Major Provisions: rulemaking: (1) Rules of Practice for method patents, to be conducted before Consistent with section 6 of the AIA, Trials before the Patent Trial and the Patent Trial and Appeal Board this final rule sets forth for inter partes Appeal Board and Judicial Review of (Board). These provisions of the AIA review: (1) The requirements for a Patent Trial and Appeal Board will take effect on September 16, 2012, petition to institute an inter partes Decisions, 77 FR 6879 (Feb. 9, 2012), to one year after the date of enactment. review of a patent; (2) the standards for provide a consolidated set of rules showing of sufficient grounds to relating to Board trial practice for inter DATES: Effective Date: September 16, institute an inter partes review; (3) the partes review, post-grant review, 2012. derivation proceedings, the transitional Applicability Dates: The changes for standards for instituting an inter partes program for covered business method inter partes review proceedings apply to review; (4) the procedures for patents, and judicial review of Board any patent issued before, on, or after conducting an inter partes review that decisions by adding new parts 42 and September 16, 2012 (subpart B). permits a patent owner response, a 90 including a new subpart A to title 37 The changes for post-grant review submission of written comments, and an of the Code of Federal Regulations (RIN proceedings generally apply to patents oral hearing; (5) the standards and 0651–AC70); (2) Changes to Implement issuing from applications subject to procedures for discovery and for the Inter Partes Review Proceedings, 77 FR first-inventor-to-file provisions of the patent owner to move to amend the 7041 (Feb. 10, 2012), to provide rules AIA (subpart C). In addition, the Chief patent; and (6) the time periods for specific to inter partes review by adding Administrative Patent Judge may, in the completing the review (subpart B of 37 CFR part 42). a new subpart B to 37 CFR part 42 (RIN interests-of-justice, order an Consistent with section 6 of the AIA, 0651–AC71); (3) Changes to Implement interferences commenced before this final rule sets forth for post-grant Post-Grant Review Proceedings, 77 FR September 16, 2012, to be dismissed review: (1) The requirements for a 7060 (Feb. 10, 2012), to provide rules without prejudice to the filing of a petition to institute a post-grant review specific to post-grant review by adding petition for post-grant review. See of a patent; (2) the standards for a new subpart C to 37 CFR part 42 (RIN 42.200(d) and § 6(f)((3)(A) of the AIA. showing of sufficient grounds to 0651–AC72); (4) Changes to Implement The changes for transitional program institute a post-grant review; (3) the Transitional Program for Covered for covered business method patents standards for instituting a post-grant Business Method Patents, 77 FR 7080 apply to any covered business method review; (4) the procedures for (Feb. 10, 2012), to provide rules specific patent issued before, on, or after conducting a post-grant review that to the transitional program for covered September 16, 2012 (subpart D). permits a patent owner response, a business method patents by adding a FOR FURTHER INFORMATION CONTACT: submission of written comments, and an new subpart D to 37 CFR part 42 (RIN Michael P. Tierney, Lead oral hearing; (5) the standards and 0651–AC73); (5) Transitional Program Administrative Patent Judge, Sally G. procedures for discovery and for the for Covered Business Method Patents— Lane, Administrative Patent Judge, Sally patent owner to move to amend the Definition of Technological Invention, C. Medley, Administrative Patent Judge, patent; and (6) the time periods for 77 FR 7095 (Feb. 10, 2012), to add a new Robert A. Clarke, Administrative Patent completing the review (subpart C of 37 rule that sets forth the definition of Judge, and Joni Y. Chang, CFR part 42). technological invention for determining Administrative Patent Judge, Board of Consistent with sections 6 and 18 of whether a patent is for a technological Patent Appeals and Interferences, by the AIA, this final rule further sets forth invention solely for purposes of the telephone at (571) 272–9797. for transitional post-grant review of transitional program for covered SUPPLEMENTARY INFORMATION: Executive covered business method patents: (1) business method patents (RIN 0651– Summary: Purpose: On September 16, The requirements for a petition to AC75); and (6) Changes to Implement 2011, the AIA was enacted into law institute a post-grant review of a Derivation Proceedings, 77 FR 7028 VerDate Mar<15>2010 17:22 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00002 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR3.SGM 14AUR3 sroberts on DSK5SPTVN1PROD with RULES Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations 48681 (Feb. 10, 2012), to provide rules specific submissions of written comments from patent owner response is extended from to derivation proceedings by adding a intellectual property organizations, two months to three months new subpart E to 37 CFR part 42 (RIN businesses, law firms, patent (§§ 42.120(b) and 42.220(b)). 0651–AC74). practitioners, and others, including a With respect to motions to amend This final rule adopts the proposed United States senator who was a challenged claims, the final rule rules, with modifications, set forth in principal author of section 18 of the clarifies that a patent owner may file the three notices of proposed AIA. The comments provided support one motion to amend but only after rulemaking: Inter partes review for, opposition to, and diverse conferring with the Board, and it must proceedings (77 FR 7041), post-grant recommendations on the proposed be filed no later than the filing of a review proceedings (77 FR 7060), and rules. The Office appreciates the patent owner response for inter partes, transitional post-grant review thoughtful comments, and has post-grant and covered business method proceedings for covered business considered and analyzed the comments patent reviews (§§ 42.121(a) and method patents (77 FR 7080), except for thoroughly. The Office’s responses to 42.221(a)). The final rule provides that definitions of the terms ‘‘covered the comments are provided in the 124 an additional motion to amend may be business method patent’’ and separate responses based on the topics authorized during inter partes, post- ‘‘technological invention’’ which are set raised in the 251 comments in the grant and covered business method forth in a separate final rule (RIN 0651– Response to Comments section infra. patent reviews when there is a good AC75). The definition of the term In light of the comments, the Office cause showing or a settlement ‘‘technological invention’’ was proposed has made modifications to the proposed (§§ 42.121(c) and 42.221(c)).
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