IP Alert: USPTO proposes new rules for AIA litigation practice | Fitch, Even, Tabin & Flannery LLP

On April 18, the USPTO announced a notice of intended rulemaking (“Notice”) setting forth: proposed rules Impact on AIA Court Proceedings for Public Comment. These proposed rules primarily address how the Patent Trial and Appeal Board (PTAB) will exercise discretionary denial of applications for inter-party Review (IPR) and Post-Grant Review (PGR). These proposed rules are of interest to parties who are or may be involved in IPR and PGR proceedings.

The proposed rules provide:

• a new, separate denial of discretion procedure which:
  • requires patent owners to request a discretionary denial in the form of a brief of no more than ten pages, filed within two months of the date on which the petition was granted a filing date by the PTAB;
  • allows the applicant to file a 10-page opposition within one month of the patent proprietor’s request for discretionary refusal; and
  • allows the patent proprietor to file a five-page reply within two weeks of filing the notice of opposition; and
  • generally does not allow discretionary denial issues to be addressed in a patent owner’s preliminary response absent PTAB approval;
• Requirements for discretionary denial of petitions citing previously discussed prior knowledge or arguments under 35 USC §325(d);
• Considerations for the discretionary rejection of “serial” and “parallel” petitions, including:
  • formal definitions for ‘serial’ and ‘parallel’ petitions;
  • Codification of the first five of the seven factors identified in the precedent General plastic Decision to reject the filing of a ‘serial’ petition;
  • a prohibition on “parallel” petitions without the petitioner showing good cause through a nine-factor balancing test that must be filed with the petition or in a separate five-page document and to which the patent owner may file a five-page response within the preliminary response period;
• a prohibition of discretionary denial arguments with respect to parallel petitions and previously argued articles or arguments under 35 USC §325(d) in determining whether to allow the filing of a petition with a motion for joinder; and
• Requirement that a joint application for discontinuance of proceedings must be accompanied by a written settlement agreement, if one exists, before or after the initiation of the proceedings.

Those familiar with the Advanced Notice of Proposed Rulemaking published by the USPTO in April 2023 discussed Heremay find that many of the previously proposed changes were not included in this notice.

Given the potential impact of the proposed rules on parties involved in IPR and PGR proceedings, all interested parties are encouraged to read the notice and consider submitting comments. The USPTO will accept public comments until June 18, 2024.