[Federal Register Volume 80, Number 212 (Tuesday, November 3, 2015)]
[Proposed Rules]
[Page 67680]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-28108]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 42

[Docket No.: PTO-P-2015-0053]
RIN 0651-AD01


Proposed Amendments to the Rules of Practice for Trials Before 
the Patent Trial and Appeal Board; Reopening of Period for Comments

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking; reopening of comment period.

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SUMMARY: The Leahy-Smith America Invents Act (AIA) provided for new 
administrative trial proceedings before the Patent Trial and Appeal 
Board (Board). The United States Patent and Trademark Office (USPTO) 
issued a number of final rules and a trial practice guide in August and 
September of 2012 to implement the new administrative trial provisions 
of the AIA. The USPTO published a request for comments in the Federal 
Register on June 27, 2014, seeking public comment on all aspects of the 
new administrative trial proceedings, including the administrative 
trial proceeding rules and trial practice guide. In response to 
comments received by the public, the USPTO issued a first, final rule, 
which was published on May 19, 2015. That final rule addressed issues 
concerning the patent owner's motion to amend and the petitioner's 
reply brief that involved ministerial changes. The USPTO issued a 
second, proposed rule that addresses more involved proposed changes to 
the rules concerning the claim construction standard for AIA trials, 
new testimonial evidence submitted with a patent owner's preliminary 
response, Rule 11-type certification, and word count for major 
briefing. The USPTO is now extending the period for public comment on 
the second, proposed rule until November 18, 2015.

DATES: Written comments on the proposed rule published August 20, 2015 
(80 FR 50720) must be received on or before November 18, 2015.

ADDRESSES: Comments must be sent by electronic mail message over the 
Internet addressed to: [email protected].
    Electronic comments submitted in plain text are preferred, but also 
may be submitted in ADOBE[supreg] portable document format or MICROSOFT 
WORD[supreg] format. Comments not submitted electronically should be 
submitted on paper in a format that facilitates convenient digital 
scanning into ADOBE[supreg] portable document format. The comments will 
be available for viewing via the USPTO's Internet Web site (http://www.uspto.gov). Because comments will be made available for public 
inspection, information that the submitter does not desire to make 
public, such as an address or phone number, should not be included in 
the comments.

FOR FURTHER INFORMATION CONTACT: Susan L. C. Mitchell, Lead 
Administrative Patent Judge by telephone at (571) 272-9797.

SUPPLEMENTARY INFORMATION: Sections 3, 6, and 18 of the AIA provided 
for the following new Board administrative trial proceedings: (1) Inter 
partes review; (2) post-grant review; (3) covered business method 
patents review; and (4) derivation proceedings. Public Law 112-29, 125 
Stat. 284 (2011). The USPTO issued a number of final rules and a trial 
practice guide in August and September of 2012 to implement the new 
administrative trial provisions of the AIA. 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--Definitions 
of Covered Business Method Patent and Technological Invention, 77 FR 
48734 (Aug. 14, 2012) (final rule); Changes to Implement Derivation 
Proceedings, 77 FR 56068 (Sept. 11, 2012) (final rule); and Office 
Patent Trial Practice Guide, 77 FR 48756 (Aug. 14, 2012).
    In issuing the administrative trial proceeding rules and trial 
practice guide, the USPTO committed to revisiting the rules and 
practice guide once the Board and public had operated under the rules 
and practice guide for some period and had gained experience with the 
new administrative trial proceedings. The USPTO began the process of 
revisiting the AIA administrative trial proceeding rules and trial 
practice guide by engaging in a nation-wide listening tour. The USPTO 
conducted a series of roundtables in April and May of 2014, held in 
Alexandria, New York City, Chicago, Detroit, Silicon Valley, Seattle, 
Dallas, and Denver, to share information concerning the AIA 
administrative trial proceedings with the public and obtain public 
feedback on these proceedings. The USPTO also published a request for 
comments in the Federal Register on June 27, 2014, seeking public 
comment on all aspects of the new administrative trial proceedings, 
including the administrative trial proceeding rules and trial practice 
guide. See Request for Comments on Trial Proceedings Under the America 
Invents Act Before the Patent Trial and Appeal Board, 79 FR 36474-77 
(June 27, 2014). In response to comments received, the USPTO issued two 
rule packages: (1) A first, final rule package that addressed issues 
concerning the patent owner's motion to amend and the petitioner's 
reply brief that involved ministerial changes, see Amendments to the 
Rules of Practice for Trial Before the Patent Trial and Appeal Board, 
80 FR 28561-66 (May 19, 2015), and (2) a second, proposed rule that 
addresses more involved proposed changes to the rules concerning the 
claim construction standard for AIA trials, new testimonial evidence 
submitted with a patent owner's preliminary response, Rule 11-type 
certification, and word count for major briefing, see Amendments to the 
Rules of Practice for Trials Before the Patent Trial and Appeal Board, 
80 FR 50720-47 (Aug. 20, 2015). The notice of proposed rulemaking for 
the second, proposed rule indicated that written comments must be 
received on or before October 19, 2015. See id at 50720. In view of 
stakeholder requests for additional time to submit comments on the new 
administrative trial proceedings, the USPTO is now extending the period 
for public comment until November 18, 2015.

    Dated: October 26, 2015.
Michelle K. Lee,
Under Secretaray of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2015-28108 Filed 11-2-15; 8:45 am]
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