View Rule
View EO 12866 Meetings | Printer-Friendly Version Download RIN Data in XML |
DOC/PTO | RIN: 0651-AD40 | Publication ID: Fall 2019 |
Title: ●Changes to Rules of Practice to Reflect Existing Board Practices In Trial Proceedings Before the Patent Trial and Appeal Board | |
Abstract:
The United States Patent and Trademark Office (USPTO or Office) proposes changes to the rules of practice in inter partes review, post-grant review, and the transitional program for covered business method patents (collectively post-grant trial) proceedings before the Patent Trial and Appeal Board (PTAB or Board) to conform the rules to existing Board practices. The Supreme Court in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), overturned the Board’s practice of instituting a post-grant trial on a subset of the claims or grounds in a petition. The Board has also recently adopted a practice of allowing sur-replies in all post-grant trials. In light of SAS Institute, and to better ensure the predictability and certainty of post-grant trial proceedings before the Board, the Office proposes changes to the rules of practice governing institution of post-grant trials; the scope of patent owner responses in post-grant trials; and the provision for, and type-volume limits of, sur-replies. |
|
Agency: Department of Commerce(DOC) | Priority: Substantive, Nonsignificant |
RIN Status: First time published in the Unified Agenda | Agenda Stage of Rulemaking: Proposed Rule Stage |
Major: No | Unfunded Mandates: No |
EO 13771 Designation: Not subject to, not significant | |
CFR Citation: 37 CFR 42 | |
Legal Authority: 35 U.S.C. 2(b)(2), 6,21, 23, 41, 135, 311, 312, 316, and 321-326 Pub. L. 112-29, 125 Stat. 284 Pub. L. 112-274, 126 Stat. 2456 |
Legal Deadline:
None |
|||||||||||||||
Timetable:
|
Regulatory Flexibility Analysis Required: No | Government Levels Affected: None |
Small Entities Affected: No | Federalism: No |
Included in the Regulatory Plan: No | |
RIN Data Printed in the FR: No | |
Agency Contact: Scott Weidenfeller Vice Chief Administrative Patent Judge Department of Commerce Patent and Trademark Office 600 Dulany Street, Alexandria, VA 22313 Phone:571 272-9797 Fax:571 273-9797 Email: scott.weidenfeller@uspto.gov |