2014-22695. Extension of Period for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Request for comments; extension 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. The USPTO is now extending the period for public comment until October 16, 2014.

DATES:

Comment Deadline Date: Written comments must be received on or before October 16, 2014.

ADDRESSES:

Comments must be sent by electronic mail message over the Internet addressed to: [e-mail].

Electronic comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or Microsoft Word® 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:

Scott R. Boalick, Vice Chief Administrative Patent Judge, Patent Trial and Appeal Board, at 571-272-8138.

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. Pub. L. 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). The request for comments indicated that written comments must be received on or before September 16, 2014. See id. at 36474. 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 October 16, 2014.

Dated: September 17, 2014.

Michelle K. Lee,

Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office.