The rules are out: key provisions of new USPTO procedures
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

The rules are out: key provisions of new USPTO procedures

The USPTO’s proposed rules for post grant review, inter partes review, transitional covered business methods programme and derivation proceedings have been posted on the Office’s website

The Office must implement the rules by September this year and March next year.

Managing IP picks out the most important aspects for patent applicants and practitioners.

Fees

Petition for inter partes review

estimated cost to prepare petition: $46,000;

filing fee for 20 or fewer claims: $27,200;

21 to 30 claims: $34,000;

31 to 40 claims: $40,800;

41 to 50 claims: $54,400;

51 to 60 claims: $68,000;

additional groups of 10 claims: $27,200 per group;

cost of a motion, opposition, or reply: $47,600.

Total = at least $73,200



Petition for post-grant review or transitional review of a covered business method

estimated cost of preparing the petition: $61,333;

filing fee for 20 or fewer claims: $35,800;

21 to 30 claims: $44,750;

31 to 40 claims: $53,700;

41 to 50 claims: $71,600;

51 to 60 claims: $89,500;

additional groups of 10 claims: $35,800 per group;

filing a patent owner preliminary response to a petition for review: $34,000;

request for reconsideration of refusal to institute review: $27,200;

cost of a motion, opposition, or reply: $44,200.

Total = at least $97,133

Derivation proceedings

estimated cost to prepare a petition: $61,333;

cost of motion, opposition, or reply: $34,000.

General

cost per party for oral hearings: $6,800;

requests to treat a settlement as business confidential: $680;

requests for adverse judgment: $340;

arbitration agreements and awards: $1,360;

requests to make a settlement agreement available: $740;

submission of a copy of a notice of appeal or a notice of election: $34.


Estimated aggregate burden on the public of implementing proposed rules in FY 2013

Inter partes review: $54.1 million

Derivation proceedings: $11,865,210

Post grant review: $22,761,410

Timing

Inter partes review

Petition must be filed after the later of:

(1) the date that is nine months after the date of the grant of the patent or of the issuance of the reissue patent; or

(2) if a post-grant review is instituted, the date of the termination of such post-grant review.

Post-grant review

Petition must be filed no later than the date that is nine months after the date of the grant of a patent or of the issuance of a reissue patent. A petition, however, may not request a post-grant review for a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued unless the petition is filed not later than the date that is nine months after the date of the grant of the original patent.

Derivation

Petition must be filed within one year after the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the allegedly derived invention.

Transitional covered business method programme

Petition may be filed any time except during the period in which a petition for a post-grant review of the patent has been filed in accordance with the statute.

Discovery

Default scheduling orders will provide for limited discovery including depositions of witnesses submitting affidavits and declarations. Additional discovery will be granted rarely, on a case by case basis, upon a showing that it is in “the interests of justice” and would not be an economic burden on the opposing party.

Pro hac vice admission

Non-registered practitioners may be admitted pro hac vice, on a case-by-case basis based on the facts and circumstances of the trial and party, as well as the skill of the practitioner.


Likeliest users

Based on the filing trends of inter partes reexamination requests, it is anticipated that petitions for inter partes review and post grant review will be filed across all technologies with approximately 50% being filed in electrical technologies, approximately 30% in mechanical technologies, and the remaining 20% in chemical technologies and design.”


more from across site and ros bottom lb

More from across our site

An intimate understanding of a client’s sector is essential to winning new business, a survey of over 28,000 corporate counsel reveals
Counsel say a Federal Circuit ruling on the obviousness test for design patents may increase the time IP owners spend defending their rights
While the INTA Annual Meeting is over for another year, here are a few things Managing IP learned after attending IP’s biggest party
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Four sources reveal which tools they have been using – or building – to help them with a range of tasks from invention generation to claim sufficiency
Managing IP reveals Wednesday's highlights, including a discussion on how AI is helping lawyers improve their "gut instinct" trademark decisions
Managing IP reveals Tuesday’s highlights, including an illuminating discussion celebrating women in the workplace and the challenges that remain
Dana Northcott, INTA’s 2024 president and associate general counsel for Amazon's IP team, talks about her work for the association
Managing IP reveals highlights from the INTA Annual Meeting, including law firms’ diversity and ESG concerns and a new beginning for a Chinese firm
Firms with a broad geographic reach are more likely to win work, especially from global companies with high turnovers, according to survey data of nearly 29,000 corporate counsel
Gift this article