80_FR_67892 80 FR 67680 - Proposed Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board; Reopening of Period for Comments

80 FR 67680 - Proposed Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board; Reopening of Period for Comments

DEPARTMENT OF COMMERCE
Patent and Trademark Office

Federal Register Volume 80, Issue 212 (November 3, 2015)

Page Range67680-67680
FR Document2015-28108

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.

Federal Register, Volume 80 Issue 212 (Tuesday, November 3, 2015) 
[Federal Register Volume 80, Number 212 (Tuesday, November 3, 2015)]
[Proposed Rules]
[Page 67680]
From the Federal Register Online  [www.thefederalregister.org]
[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.

-----------------------------------------------------------------------

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]
 BILLING CODE 3510-16-M

67680 Federal Register / Vol. 80, No. 212 / Tuesday, November 3, 2015 / Proposed Rules that, from 7:30 a.m. to 9 a.m. and 4:30 DATES: Written comments on the some period and had gained experience p.m. to 6 p.m., Monday through Friday, proposed rule published August 20, with the new administrative trial except Federal holidays, the draw need 2015 (80 FR 50720) must be received on proceedings. The USPTO began the not open. Public vessels of the United or before November 18, 2015. process of revisiting the AIA States, tugs with tows, and vessels in ADDRESSES: Comments must be sent by administrative trial proceeding rules distress shall be passed at any time. electronic mail message over the and trial practice guide by engaging in Dated: October 22, 2015. Internet addressed to: Trialrules2015@ a nation-wide listening tour. The S.A. Buschman, uspto.gov. USPTO conducted a series of Electronic comments submitted in roundtables in April and May of 2014, Rear Admiral, U.S. Coast Guard, Commander, Seventh Coast Guard District. plain text are preferred, but also may be held in Alexandria, New York City, submitted in ADOBE® portable Chicago, Detroit, Silicon Valley, Seattle, [FR Doc. 2015–27999 Filed 11–2–15; 8:45 am] document format or MICROSOFT Dallas, and Denver, to share information BILLING CODE 9110–04–P WORD® format. Comments not concerning the AIA administrative trial submitted electronically should be proceedings with the public and obtain submitted on paper in a format that DEPARTMENT OF COMMERCE public feedback on these proceedings. facilitates convenient digital scanning into ADOBE® portable document The USPTO also published a request for Patent and Trademark Office format. The comments will be available comments in the Federal Register on for viewing via the USPTO’s Internet June 27, 2014, seeking public comment 37 CFR Part 42 Web site (http://www.uspto.gov). on all aspects of the new administrative Because comments will be made trial proceedings, including the [Docket No.: PTO–P–2015–0053] available for public inspection, administrative trial proceeding rules RIN 0651–AD01 information that the submitter does not and trial practice guide. See Request for desire to make public, such as an Comments on Trial Proceedings Under Proposed Amendments to the Rules of address or phone number, should not be the America Invents Act Before the Practice for Trials Before the Patent included in the comments. Patent Trial and Appeal Board, 79 FR Trial and Appeal Board; Reopening of 36474–77 (June 27, 2014). In response to FOR FURTHER INFORMATION CONTACT: Period for Comments comments received, the USPTO issued Susan L. C. Mitchell, Lead AGENCY: United States Patent and Administrative Patent Judge by two rule packages: (1) A first, final rule Trademark Office, Commerce. telephone at (571) 272–9797. package that addressed issues ACTION: Notice of proposed rulemaking; SUPPLEMENTARY INFORMATION: Sections concerning the patent owner’s motion to reopening of comment period. 3, 6, and 18 of the AIA provided for the amend and the petitioner’s reply brief following new Board administrative that involved ministerial changes, see SUMMARY: The Leahy-Smith America trial proceedings: (1) Inter partes Amendments to the Rules of Practice for Invents Act (AIA) provided for new review; (2) post-grant review; (3) Trial Before the Patent Trial and Appeal administrative trial proceedings before covered business method patents Board, 80 FR 28561–66 (May 19, 2015), the Patent Trial and Appeal Board review; and (4) derivation proceedings. and (2) a second, proposed rule that (Board). The United States Patent and Public Law 112–29, 125 Stat. 284 addresses more involved proposed Trademark Office (USPTO) issued a (2011). The USPTO issued a number of changes to the rules concerning the number of final rules and a trial practice final rules and a trial practice guide in claim construction standard for AIA guide in August and September of 2012 August and September of 2012 to trials, new testimonial evidence to implement the new administrative implement the new administrative trial submitted with a patent owner’s trial provisions of the AIA. The USPTO provisions of the AIA. See Rules of preliminary response, Rule 11-type published a request for comments in the Practice for Trials Before the Patent certification, and word count for major Federal Register on June 27, 2014, Trial and Appeal Board and Judicial briefing, see Amendments to the Rules seeking public comment on all aspects Review of Patent Trial and Appeal of the new administrative trial of Practice for Trials Before the Patent Board Decisions, 77 FR 48612 (Aug. 14, proceedings, including the Trial and Appeal Board, 80 FR 50720– 2012) (final rule); Changes to Implement administrative trial proceeding rules Inter Partes Review Proceedings, Post- 47 (Aug. 20, 2015). The notice of and trial practice guide. In response to Grant Review Proceedings, and proposed rulemaking for the second, comments received by the public, the Transitional Program for Covered proposed rule indicated that written USPTO issued a first, final rule, which Business Method Patents, 77 FR 48680 comments must be received on or before was published on May 19, 2015. That (Aug. 14, 2012) (final rule); Transitional October 19, 2015. See id at 50720. In final rule addressed issues concerning Program for Covered Business Method view of stakeholder requests for the patent owner’s motion to amend and Patents—Definitions of Covered additional time to submit comments on the petitioner’s reply brief that involved Business Method Patent and the new administrative trial ministerial changes. The USPTO issued Technological Invention, 77 FR 48734 proceedings, the USPTO is now a second, proposed rule that addresses (Aug. 14, 2012) (final rule); Changes to extending the period for public more involved proposed changes to the Implement Derivation Proceedings, 77 comment until November 18, 2015. rules concerning the claim construction FR 56068 (Sept. 11, 2012) (final rule); mstockstill on DSK4VPTVN1PROD with PROPOSALS Dated: October 26, 2015. standard for AIA trials, new testimonial and Office Patent Trial Practice Guide, evidence submitted with a patent Michelle K. Lee, 77 FR 48756 (Aug. 14, 2012). owner’s preliminary response, Rule 11- In issuing the administrative trial Under Secretaray of Commerce for type certification, and word count for proceeding rules and trial practice Intellectual Property and Director of the major briefing. The USPTO is now guide, the USPTO committed to United States Patent and Trademark Office. extending the period for public revisiting the rules and practice guide [FR Doc. 2015–28108 Filed 11–2–15; 8:45 am] comment on the second, proposed rule once the Board and public had operated BILLING CODE 3510–16–M until November 18, 2015. under the rules and practice guide for VerDate Sep<11>2014 17:11 Nov 02, 2015 Jkt 238001 PO 00000 Frm 00009 Fmt 4702 Sfmt 9990 E:\FR\FM\03NOP1.SGM 03NOP1


Document Created: 2018-03-01 11:32:37
Document Modified: 2018-03-01 11:32:37
CategoryRegulatory Information
CollectionFederal Register
sudoc ClassAE 2.7:
GS 4.107:
AE 2.106:
PublisherOffice of the Federal Register, National Archives and Records Administration
SectionProposed Rules
ActionNotice of proposed rulemaking; reopening of comment period.
DatesWritten comments on the proposed rule published August 20, 2015 (80 FR 50720) must be received on or before November 18, 2015.
ContactSusan L. C. Mitchell, Lead Administrative Patent Judge by telephone at (571) 272-9797.
FR Citation80 FR 67680 
RIN Number0651-AD01
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