Changes To Implement the Technical Corrections to the Leahy-Smith America Invents Act as to Inter Partes Review, 17871-17874 [2013-06768]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 78, Number 57 (Monday, March 25, 2013)]
[Rules and Regulations]
[Pages 17871-17874]
From the Federal Register Online via the Government Printing 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).

0
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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