IP Law Daily, PATENT NEWS: USPTO seeks public input on ANPR regarding changes to AIA proceedings, (Apr 20, 2023)

By Patricia K. Ruiz, J.D.

The USPTO is considering changing the rules of practices for inter partes review and post-grant review proceedings.

In an effort to ensure robust and transparent engagement throughout the rulemaking process, the U.S. Patent and Trademark Office (USPTO has announced an advance notice of proposed rulemaking (ANPR) seeking public input regarding proposed changes to discretionary institution practices, petition work limits, and settlement practices for America Invents Act (AIA) proceedings before the Patent Trial and Appeal Board (PTAB). The ANPR provides an opportunity for the public to provide initial feedback on proposals before the USPTO shapes potential rules in a notice of proposed rulemaking (NPRM).

According to the USPTO press release, the USPTO is considering modifications to the rules of practices for inter partes review (IPR) and post-grant review (PGR) proceedings. The changes would amend the rules of practice for IPR and PRG proceedings under the AIA, building on and codifying existing precedent and guidance on the director’s discretion to determine whether to institute an IPR or PGR. The USPTO is considering broadening the types of relationships between petitioners and other entities it will consider when evaluating discretionary denial in order to ensure that entities related to a party in an AIA proceeding are fully evaluated with regard to conflicts, estoppel provisions, and other aspects of the proceedings. Among other changes, the USPTO is also considering whether, in certain circumstances, challenging presenting “compelling merits” will be allowed to proceed even where the petition would otherwise be a candidate for discretionary denial.

The USPTO seeks comments regarding proposals that would allow petitioners to pay additional fees for higher petition word count limits, provide a separate briefing process for discretionary institution arguments, and clarify that parties that settle prior to institution must file copies of any settlement agreements with the PTAB. The USPTO welcomes feedback on the proposals listed and specific proposals not listed in the ANPR and input as to why the proposals would serve the USPTO’s mission to promote and protect innovation and investment and align USPTO practices with the congressional intent behind the AIA to provide a less expensive alternative to district court litigation in resolving certain patentability issues while protecting against patentee harassment.

Comments will be accepted for 60 days, through June 20, 2023. Absent extenuating circumstances, the USPTO does not anticipate extending the deadline. Those who miss the deadline will have an opportunity to submit comments during the next stage of rulemaking.

News: Patent USPTO GCNNews