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.
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
estimated cost to prepare a petition: $61,333;
cost of motion, opposition, or reply: $34,000.
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
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.
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.
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.
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.
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.”