[Federal Register Volume 77, Number 28 (Friday, February 10, 2012)]
[Proposed Rules][Pages 7041-7060]
From the Federal Register Online via the Government Printing Office [www.gpo.gov] [FR Doc No: 2012-2534]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 42 [Docket No. PTO-P-2011-0083] RIN 0651-AC71
Changes to Implement Inter Partes Review Proceedings
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
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SUPPLEMENTARY INFORMATION: On September 16, 2011, the Leahy-Smith America Invents Act was enacted into law (Pub. L. 112-29, 125 Stat. 284 (2011)). The purpose of the Leahy-Smith America Invents Act and these proposed regulations is to establish a = more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs. The preamble of this notice sets forth in detail the procedures by which the Board will conduct inter partes review proceedings. The USPTO is engaged in a transparent process to create a timely, cost-effective alternative to litigation. Moreover, the rulemaking process is designed to ensure the integrity of the trial procedures. See 35 U.S.C. 316(b), as amended. The proposed rules would provide a set of rules relating to Board trial practice for inter partes review...
Section 6(a) of the Leahy-Smith America Invents Act amends 35 U.S.C. 311, entitled ``Inter partes review.'' 35 U.S.C. 311(a), as amended, will provide that, subject to the provisions of chapter 31 of title 35, United States Code, a person who is not the owner of a patent may file a petition with the Office to institute an inter partes review of the patent. 35 U.S.C. 311(a), as amended, will also provide that the Director will establish, by regulation, fees to be paid by the person requesting the review, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review. 35 U.S.C. 311(b), as amended, will provide that a petitioner in an inter partes review may request to cancel as unpatentable one or more claims of a patent only on a ground that could be raised under 35 U.S.C. 102 or 103 and only on the basis of prior art consisting of patents or printed publications. 35 U.S.C. 311(c), as amended, will provide that a petition for inter partes review may be filed after the later of either: (1) the date that is nine months after the grant of a patent or issuance of a reissue of a patent; or (2) if a post-grant review is instituted under chapter 32 of title 35, United States Code, the dateof the termination of that post-grant review.
The grounds for seeking an inter partes review will be limited compared with post-grant review. The grounds for seeking inter partes review are limited to issues raised under 35 U.S.C. 102 or 103 and only on the basis of prior art consisting of patents or printed publications...
For the full text of this proposed rule, access http://www.gpo.gov/fdsys/pkg/FR-2012-02-10/html/2012-2534.htm