On April 18, the USPTO announced a Notice of Proposed Rulemaking (“Notice”), which sets forth proposed rules affecting AIA trial proceedings for public comment. These proposed rules relate primarily to how the Patent Trial and Appeal Board (PTAB) will handle discretionary denial of petitions for inter partes review (IPR) and post grant review (PGR). These proposed rules will be of interest to parties that are, or could be, involved in IPR and PGR proceedings.

The proposed rules set forth:

• a new separate discretionary denial briefing procedure that:
  • requires patent owners to request discretionary denial via a maximum 10-page brief, to be filed within two months from the date the petition has been granted a filing date by the PTAB;
  • allows the petitioner to file a 10-page opposition within one month after the patent owner requests discretionary denial; and
  • allows the patent owner to file a 5-page sur-reply within two weeks after the filing of the opposition brief; and
  • generally disallows discretionary denial issues to be addressed in a patent owner preliminary response absent permission from the PTAB;
• requirements for discretionary denial of petitions raising previously addressed prior art or arguments under 35 U.S.C. §325(d);
• considerations for discretionary denial of “serial” and “parallel” petitions, including:
  • formal definitions for “serial” and “parallel” petitions;
  • codification of the first five of the seven factors identified in the precedential General Plastic decision for determining whether to deny institution of a “serial” petition;
  • a prohibition against “parallel” petitions absent a showing of good cause by the petitioner, via a nine-factor balancing test, which shall be submitted with the petition or in a separate 5-page paper, and to which the patent owner may submit a 5-page response by the preliminary response deadline;
• a prohibition against discretionary denial arguments relating to parallel petitions and previously considered art or arguments under 35 U.S.C. §325(d) when determining whether to allow institution of a petition accompanied by a motion for joinder; and
• requiring a joint request for termination of a proceeding before or after institution to be accompanied by a written settlement agreement, if any.

Those familiar with the Advanced Notice of Proposed Rulemaking issued in April 2023 by the USPTO, discussed here, may observe that many of the previously proposed changes were not included in this Notice.

In view of the potential effect of the proposed rules on parties involved in IPR and PGR proceedings, all stakeholders are advised to review the Notice and consider submitting comments. The USPTO is accepting public comments through June 18, 2024.