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By Tony Dutra
The Patent and Trademark Office held Feb. 17 the first of seven “roadshows” on implementation of the America Invents Act at its headquarters in Alexandria, Va.
The roadshow presenters from the agency explained rules packages from nine recently published Federal Register notices of proposed rulemaking (NPRMs) on new AIA-mandated procedures. Two administrative patent judges were particularly forthcoming in also describing the PTO's rationale behind proposed rules for new post-grant patent revocation proceedings.
Stakeholders in the audience and listening via webcast asked detailed questions about the rules, but several queries were directed to and critical of the agency's proposal for revised patent application and maintenance fees, as well as the fees for the new procedures, published Feb. 7 (26 PTD, 2/9/12).
The full-day meeting was divided into four sessions, each with a slide presentation followed by audience Q&A. Each topic has been addressed in one or more NPRMs within the last month:
• Pre-issuance Submission (77 Fed. Reg. 448, Jan. 5, 2012) and Inventor's Oath/Declaration (77 Fed. Reg. 982, Jan. 6, 2012) (04 PTD, 1/9/12);
• Miscellaneous Post Patent and Supplemental Examination (77 Fed. Reg. 3666, Jan. 25, 2012) (17 PTD, 1/27/12);
• Specific Rules for Post Grant Review (77 Fed. Reg. 7060, Feb. 10, 2012), Inter Partes Review (77 Fed. Reg. 7041, Feb. 10, 2012), Covered Business Method Review (77 Fed. Reg. 7080, Feb. 10, 2012; 77 Fed. Reg. 7095, Feb. 10, 2012), and Derivation (77 Fed. Reg. 7028, Feb. 10, 2012) (28 PTD, 2/13/12); and
• Umbrella Rules (77 Fed. Reg. 6879, Feb. 9, 2012) (28 PTD, 2/13/12).
Janet Gongola, the PTO's patent reform coordinator, opened the roadshow and moderated each session. She briefly touched on other PTO public hearings, including discussions of the agency's new fee proposal and its AIA-mandated report on genetic testing.
Deputy Director Teresa Stanek Rea provided an overview of each topic, but said generally that “the sheer number of provisions [in the AIA] creates a challenge to implement.”
The first two roadshow sessions were presented by Robert W. Bahr, senior patent attorney in the PTO's Office of the Deputy Commissioner for Patent Examination Policy, and Drew Hirshfeld, senior advisor and associate commissioner for patent examination policy.
The NPRM as to supplemental examination actually started the concern over fee increases, as it proposed to raise ex parte reexamination—a follow-on requirement of most supplemental examination requests—from $2,520 to $17,750. Gongola, in fact, preempted the audience's concerns over fees by noting “what seems to be hefty cost” and a “big jump” in the fee.
Bahr described the PTO's recent look into its costs for many of its processes and seemed to suggest that the agency was surprised with what it found. “The question was why we didn't adjust [the fee] earlier,” he said.
Vice Chief Judge Jay Moore and Judge Michael Tierney of the Board of Patent Appeals and Interferences presented the second two roadshow sessions. The BPAI will be renamed the Patent Trial and Appeal Board as of Sept. 16.
The new revocation rules are for adversarial proceedings that, prior to the AIA, have been limited to interference practice. The APJs acknowledged that they proposed procedures drawn from multiple sources, including the Federal Rules of Civil Procedure, model rules of various district courts, and public commentary preceding the NPRMs.
The audience posed several questions probing for more detail than was in the NPRMs. For example, former PTO Solicitor Nancy J. Linck, now with Rothwell Figg Ernst & Manbeck, Washington, D.C., asked why the rules did not define what constitutes being “charged with infringement” so as to be eligible to file a petition challenging a covered business method patent.
Tierney explained that the board was unwilling to create a bright-line rule at this point, but, directing a question to those planning to comment on the NPRMs, said, “Let us know what you think it should be.”
However, once again, the conversation turned to the fees. Indeed, Tierney devoted a considerable portion of his presentation—“jumping on the grenade,” he said—to the PTO's defense of the fees that, two days earlier in a separate PTO hearing, one stakeholder said were “incredibly out of line.”
The primary problem with the proposed structure cited by stakeholders is that the fees would increase based on the number of patent claims challenged. The patent community has chided the PTO for that approach, in part because it would require a challenger of 200 claims of a patent to pay $590,000 or $450,000 for post-grant review or inter partes review, respectively.
However, Tierney said that the PTO looked at its experience with inter partes reexamination and concluded that any challenge to more than 100 claims is likely to be “an extreme outlier.” The agency reviewed 40 reexaminations over a three-month period and found only one in which more than 70 claims were contested, in fact.
Further, for those anticipating challenges to many more claims, he recommended filing multiple petitions as to the same patent, with each set of claims challenged being directed to a specific issue.
That, ultimately, he said, is the rationale behind the incremental pricing: The more claims challenged, the more likely there are to be multiple issues, and thus the less likely the board is going to be able to meet the 12-month turnaround called for in the AIA.
Additional roadshows will be held:
• Friday, Feb. 24, at the Sunnyvale Public Library, Sunnyvale, Calif.;
• Monday, Feb. 27, at the Marriott Library of the University of Utah, Salt Lake City;
• Wednesday, Feb. 29, at the Dallas Public Library;
• Friday, March 2, at the Broward County Main Library in Ft. Lauderdale, Fla.;
• Monday, March 5, at the Boston Public Library; and
• Wednesday, March 7, at the Chicago Public Library.
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