[author: Donald Zuhn]

On Monday, the U.S. Patent and Trademark Office published its final rule to implement the miscellaneous post patent provisions of the Leahy-Smith America Invents Act (77 Fed. Reg. 46615).  The final rule, which takes effect on September 16, 2012, is the third final rule package for implementing AIA provisions to be published by the Office.

In the Office's notice of proposed rulemaking regarding the miscellaneous post patent provisions, published in January (see "USPTO Proposes Rules Changes for Implementing AIA Provisions -- Miscellaneous Post Patent Provisions"), the Office noted that AIA provisions would result in the following changes to Title 35:

• AIA § 6(g) amends 35 U.S.C. § 301 to expand the information that can be submitted in the file of an issued patent to include written statements made by a patent owner before a Federal court or the Office regarding the scope of any claim of the patent;

• AIA § 6(a) and (d) contain provisions in new 35 U.S.C. §§ 315(e)(1) and 325(e)(1) that estop a third party requester from filing a request for ex parte reexamination where the third party requester filed a petition for inter partes review or post grant review and a final written decision under 35 U.S.C. §§ 318(a) or 328(a) has been issued;

• AIA § 6(h)(1) amends 35 U.S.C. § 303 to expressly identify the authority of the Director to initiate reexamination based on patents and publications cited in a prior reexamination request under 35 U.S.C. § 302;

• AIA § 3(i) replaces interference proceedings with derivation proceedings;

• AIA § 3(j) replaces the "Board of Patent Appeals and Interferences" with the "Patent Trial and Appeal Board" in 35 U.S.C. §§ 134, 145, 146, 154, and 305;

• AIA § 6(a) replaces inter partes reexamination with inter partes review of a patent;

• AIA § 6(d) provides for post-grant review of patents; and

• AIA § 7 amends 35 U.S.C. § 6(b) to define the duties of the Patent Trial and Appeal Board.

To implement these changes, the Office proposed a number of rules changes in January, including the following:

• Rule 1.501 -- rewritten to allow for the submission of "statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent" (the final rule requires that such submissions must (1) identify the forum and proceeding in which the patent owner filed each statement, and the specific papers and portions of the papers submitted that contain the statements; (2) explain how each statement is a statement in which patent owner took a position on the scope of any claim in the patent; (3) explain the pertinency and manner of applying the statement to at least one patent claim; and (4) reflect that a copy of the submission has been served on the patent owner, if submitted by a party other than the patent owner);

• Rule 1.501(f) -- limits the use of statements of the patent owner and accompanying information for determining the proper meaning of a patent claim in an ex parte reexamination proceeding that has been ordered pursuant to 35 U.S.C. § 304, an inter partes review proceeding that has been instituted pursuant to 35 U.S.C. § 314, or a post grant review proceeding that has been instituted pursuant to 35 U.S.C. § 324;

• Rule 1.510(b)(6) -- requires a certification that the estoppel provisions of inter partes review and post grant review do not bar the third party from requesting ex parte reexamination, as well as a statement identifying the real parties in interest to allow for a determine as to whether an inter partes review or post grant review filed subsequent to an ex parte reexamination bars the third party from maintaining a pending ex parte reexamination (the requester can remain anonymous by providing the identification and requesting that the Office seal it); and

• A number of rules would be rewritten to replace "Board of Patent Appeals and Interferences" with "Patent Trial and Appeal Board," add specific references to trial proceedings before the Patent Trial and Appeal Board, and add specific references to derivation proceedings.

As with the other final rules, the Office made some changes to the proposed rules in response to comments received following publication of the Office's notice of proposed rulemaking.  In particular, the Office notes that in view of the comments it received:

• The scope of what may be submitted pursuant to Rule 1.501(a) has been expanded relative to the proposed rule because "the final rule does not prohibit the submission of written statements 'made outside of a Federal court or Office proceeding and later filed for inclusion in a Federal court or Office proceeding'";

• The scope of the estoppel provisions of Rule 1.501(a) is interpreted to only prohibit the filing of a subsequent request for ex parte reexamination; and

• The final rule does not require an ex parte reexamination requester to identify themselves upon the filing of the request.

Additional discussion of the amendments to the rules, a listing of the comments received by the Office in response to its notice of proposed rulemaking and the Office's responses to these comments, as well as revised versions of the affected rules, can be found in the Office's Federal Register notice (77 Fed. Reg. 46615).