[Federal Register Volume 78, Number 57 (Monday, March 25, 2013)]
[Rules and Regulations]
[Pages 17871-17874]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-06768]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 42
[Docket No. PTO-P-2013-0003]
RIN 0651-AC83
Changes To Implement the Technical Corrections to the Leahy-Smith
America Invents Act as to Inter Partes Review
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (Office or
USPTO) is revising the rules of practice to implement the changes with
respect to inter partes review that are set forth in section 1(d) of
the Act to correct and improve certain provisions of the Leahy-Smith
America Invents Act and title 35, United States Code (``AIA Technical
Corrections Act''). Consistent with the statutory changes, this final
rule eliminates the nine-month ``dead zone'' for filing an inter partes
review petition challenging a first-to-invent patent or reissue patent.
Under the final rule, a petitioner may file an inter partes review
petition challenging a first-to-invent patent or reissue patent upon
issuance, including during the first nine months after issuance.
DATES: Effective Date: March 25, 2013.
FOR FURTHER INFORMATION CONTACT: Michael P. Tierney, Sally G. Lane,
Sally C. Medley, or Joni Y. Chang, Administrative Patent Judges, Patent
Trial and Appeal Board, by telephone at (571) 272-9797.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: The purpose of the AIA Technical
Corrections Act is to correct and improve certain provisions of the
Leahy-Smith America Invents Act (``AIA''). With respect to inter partes
review, section 1(d) of the AIA Technical Corrections Act and this
final rule eliminate the nine-month ``dead zone'' for filing a petition
challenging a first-to-invent patent or reissue patent. Under this
final rule, first-to-invent patents and reissue patents are eligible
for inter partes review upon issuance. In other words, a petitioner may
file an inter partes review petition challenging a first-to-invent
patent or reissue patent upon issuance, including during the first nine
months after issuance. That will improve patent quality and limit
unnecessary and counterproductive litigation. The preamble of this rule
sets forth in detail statutory and regulatory
[[Page 17872]]
changes as to inter partes review proceedings conducted by the Patent
Trial and Appeal Board (Board).
Summary of Major Provisions: Consistent with section 1(d) of the
AIA Technical Corrections Act, this final rule permits a petitioner to
file an inter partes review petition challenging a first-to-invent
patent or reissue patent, upon issuance, eliminating the nine-month
``dead zone'' as to first-to-invent patents and reissue patents.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993), as amended by Executive
Order 13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007).
Background: On September 16, 2011, the AIA was enacted into law
(Pub. L. 112-29, 125 Stat. 284 (2011). The AIA created four new Board
proceedings: inter partes review, post-grant review, covered business
method patent review, and derivation proceedings. See sections 3, 6 and
18 of the AIA. To implement the AIA provisions, the Office promulgated
final rules to set forth the standards and procedures for conducting
the new Board proceedings. See Rules of Practice for Trials before the
Patent Trial and Appeal Board and Judicial Review of Patent Trial and
Appeal Board Decisions, 77 FR 48612 (Aug. 14, 2012) (final rule);
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review
Proceedings, and Transitional Program for Covered Business Method
Patents, 77 FR 48680 (Aug. 14, 2012) (final rule); Transitional Program
for Covered Business Method Patents--Definition of Technological
Invention, 77 FR 48734 (Aug. 14, 2012) (final rule); and Changes to
Implement Derivation Proceedings, 77 FR 56068 (Sept. 11, 2012) (final
rule).
Under the AIA, as originally enacted, a petition for inter partes
review could only be filed after the later of either: (1) The date that
is nine months after the issuance of an original patent or reissued
patent; or (2) if a post-grant review is instituted, the date of the
termination of such post-grant review. Notably, inter partes reviews
were available only for patents that had been issued for at least nine
months. Additionally, post-grant reviews were not available for first-
to-invent patents and reissued patents where the original patent was no
longer eligible for post-grant review (35 U.S.C. 325(f)). See sections
6(d) and (f)(2) of the AIA. That created two nine-month ``dead zones,''
namely first-to-invent patents and reissued patents could not be
challenged in an inter partes proceeding before the Office during the
first nine months after issuance.
The AIA Technical Corrections Act was enacted on January 14, 2013.
See Pub. L. 112-274 (2013). Section 1(d) of the AIA Technical
Corrections Act amended 35 U.S.C. 311(c) to eliminate the ``dead
zones'' by allowing first-to-invent patents and reissued patents to be
challenged in inter partes reviews during the first nine months after
issuance. Pursuant to section 1(d) of the AIA Technical Corrections
Act, the Office is revising the rules of practice to permit petitioners
to file inter partes review petitions challenging first-to-invent
patents and reissue patents upon issuance.
Discussion of Section 1(d) of the AIA Technical Corrections Act
Section 1(d) of the AIA Technical Corrections Act entitled ``DEAD
ZONES'' provides that 35 U.S.C. 311(c) shall not apply to a petition to
institute an inter partes review of a patent that is not a patent
described in section 3(n)(1) of the Leahy-Smith America Invents Act (35
U.S.C. 100 note). The statutory provision also amends 35 U.S.C. 311(c)
by striking ``or issuance of a reissue of a patent.'' This final rule
implements these statutory changes.
The changes for inter partes review took effect on January 14,
2013, the date of enactment of the AIA Technical Corrections Act, and
apply to proceedings commenced on or after January 14, 2013. See
section 1(n) of the AIA Technical Corrections Act.
Discussion of Specific Rules
Section 42.102: Consistent with section 1(d) of the AIA Technical
Corrections Act, Sec. 42.102(a) is amended in this final rule to add:
(1) ``The following dates, where applicable;'' (2) ``If the patent is a
patent described in section 3(n)(1) of the Leahy-Smith America Invents
Act;'' and (3) ``If the patent is a patent that is not described in
section 3(n)(1) of the Leahy-Smith American Invents Act, the date of
the grant of the patent.'' Section 42.102(a) is also amended to delete
``or of the issuance of the reissue patent.'' Under revised Sec.
42.102(a), a petition for inter partes review of a patent must be filed
after the later of the following dates, where applicable: (1) If the
patent is a patent described in section 3(n)(1) of the Leahy-Smith
America Invents Act, the date that is nine months after the date of the
grant of the patent; (2) if the patent is a patent that is not
described in section 3(n)(1) of the Leahy-Smith American Invents Act,
the date of the grant of the patent; or (3) if a post-grant review is
instituted as set forth in subpart C of this part, the date of the
termination of such post-grant review.
Rulemaking Considerations
A. Administrative Procedure Act: This final rule revises the rules
of practice concerning the procedure for requesting an inter partes
review. Consistent with section 1(d) of the AIA Technical Corrections
Act, the changes set forth in this final rule eliminate the nine-month
``dead zone'' as to first-to-invent patents and reissue patents. Under
the final rule, a petitioner may file an inter partes review petition
challenging a first-to-invent patent or reissue patent upon issuance.
Therefore, the changes adopted in this rule do not change the
substantive criteria of patentability.
Moreover, good cause exists to make these procedural changes
without prior notice and opportunity for comment and to be effective
immediately so as to avoid inconsistencies between regulations and the
AIA Technical Corrections Act. This nine-month ``dead zone'' has
already been eliminated by operation of the enactment of the AIA
Technical Corrections Act, effective January 14, 2013. Accordingly,
prior notice and opportunity for public comment are not required
pursuant to 5 U.S.C. 553(b) or (c) (or any other law) and thirty-day
advance publication is not required pursuant to 5 U.S.C. 553(b) (or any
other law). See also Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37
(Fed. Cir. 2008).
B. Regulatory Flexibility Act: For the reasons set forth herein,
the Deputy General Counsel for General Law of the United States Patent
and Trademark Office has certified to the Chief Counsel for Advocacy of
the Small Business Administration that the changes set forth in this
rule will not have a significant economic impact on a substantial
number of small entities. See 5 U.S.C. 605(b).
Consistent with section 1(d) of the AIA Technical Corrections Act,
the changes set forth in this final rule eliminate the nine-month
``dead zone'' as to first-to-invent patents and reissue patents. Under
the final rule, a petitioner may file an inter partes review petition
challenging a first-to-invent patent or reissue patent upon issuance.
These changes mirror provisions in the AIA Technical Corrections Act
and do not add any additional requirements (including information
collection requirements) or fees for petitioners or patent owners.
For the foregoing reasons, none of the changes in this rule will
have a significant economic impact on a substantial number of small
entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking
[[Page 17873]]
has been determined to be not significant for purposes of Executive
Order 12866 (Sept. 30, 1993), as amended by Executive Order 13258 (Feb.
26, 2002) and Executive Order 13422 (Jan. 18, 2007).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on
society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector, and the public as a whole,
and provided on-line access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not effect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801-808), prior to issuing any final rule, the United
States Patent and Trademark Office will submit a report containing the
final rule and other required information to the United States Senate,
the United States House of Representatives, and the Comptroller General
of the Government Accountability Office.
The changes in this rule are not expected to result in an annual
effect on the economy of 100 million dollars or more, a major increase
in costs or prices, or significant adverse effects on competition,
employment, investment, productivity, innovation, or the ability of
United States-based enterprises to compete with foreign-based
enterprises in domestic and export markets. Therefore, this rulemaking
is not expected to result in a ``major rule'' as defined in 5 U.S.C.
804(2).
L. Unfunded Mandates Reform Act of 1995: The changes set forth in
this rule do not involve a Federal intergovernmental mandate that will
result in the expenditure by State, local, and tribal governments, in
the aggregate, of 100 million dollars (as adjusted) or more in any one
year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501-1571.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321-4370h.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501-3549) requires that the USPTO consider the impact of
paperwork and other information collection burdens imposed on the
public. The rules of practice pertaining to inter partes review have
been reviewed and approved by the Office of Management and Budget (OMB)
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549) under
OMB control number 0651-0069. Consistent with section 1(d) of the AIA
Technical Corrections Act, the changes set forth in this final rule
eliminate the nine-month ``dead zone'' as to first-to-invent patents
and reissue patents. Under the final rule, a petitioner may file an
inter partes review petition challenging a first-to-invent patent or
reissue patent upon issuance. This final rule does not add any
additional requirements (including information collection requirements)
or fees for patent applicants or patentees. Moreover, this final rule
eliminates the delay in filing inter partes review petitions, but would
not impact the number of patents eligible for inter partes review.
Therefore, the Office is not resubmitting information collection
packages to OMB for its review and approval under the Paperwork
Reduction Act of 1995 because the changes in this final rule do not
affect the information collection requirements associated with the
information collections previously approved under OMB control number
0651-0069 or any other information collections.
Notwithstanding any other provision of law, no person is required
to respond to nor shall any person be subject to a penalty for failure
to comply with a collection of information subject to the requirements
of the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 42
Administrative practice and procedure, Inventions and patents,
Lawyers.
Amendments to the Regulatory Text
For the reasons stated in the preamble, the Under Secretary of
Commerce for Intellectual Property and Director of the United States
Patent and Trademark Office amends 37 CFR part 42 as follows:
[[Page 17874]]
PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
0
1. The authority citation for 37 CFR part 42 is revised to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316,
321-326, and the Leahy-Smith America Invents Act, Pub. L. 112-29,
sections 6(c), 6(f), and 18, 125 Stat. 284, 304, 311, and 329
(2011), as amended by Pub. L. 112-274 (2013).
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2. Section 42.102 is amended by revising paragraph (a) to read as
follows:
Sec. 42.102 Time for filing.
(a) A petition for inter partes review of a patent must be filed
after the later of the following dates, where applicable:
(1) If the patent is a patent described in section 3(n)(1) of the
Leahy-Smith America Invents Act, the date that is nine months after the
date of the grant of the patent;
(2) If the patent is a patent that is not described in section
3(n)(1) of the Leahy-Smith American Invents Act, the date of the grant
of the patent; or
(3) If a post-grant review is instituted as set forth in subpart C
of this part, the date of the termination of such post-grant review.
* * * * *
Dated: March 20, 2013.
Teresa Stanek Rea,
Acting Under Secretary of Commerce for Intellectual Property and Acting
Director of the United States Patent and Trademark Office.
[FR Doc. 2013-06768 Filed 3-22-13; 8:45 am]
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