Patent Office Proposes New Trial Procedures

WASHINGTON (CN) - The U.S. Patent and Trademark Office has proposed new rules for trials conducted by the Patent Trial and Appeals Board.

The change provides a consolidated set of rules relating to board trial practice for inter partes review, post-grant review, derivation proceedings, and the transitional program for covered business method patents.

The Leahy-Smith America Invents Act created the board to cut down on patent litigation in civil courts. Under the act, board rulings are only allowed appeals in the U.S. District Court for the Eastern District of Virginia and the U.S. Court of Appeals for the Federal Circuit.

One of the main changes to the rules is the creation of a derivation proceeding, in which an inventor who believes his idea has been stolen by someone else who filed for a patent first can show that the filing party derived the idea from access to the inventor's work.

Under the proposed rules, derivation proceedings must be implemented within 1 year of the first publication of a claim to an invention. These proceedings may either be conducted by the board or turned over to arbitration.

For inter partes and post-grant review, the rules would require the board to give a claim in an unexpired patent the broadest reasonable construction and limit the number and types of reviews in the first 4 years following an initial review.

The rules also would clearly define patents to be treated under a new transitional program, covering patents for business processes that do not involve the invention of new technology but the processing of data in the practice, administration or management of a financial product or service.

In a related matter, the PTO also issued proposed rules of practice for attorneys practicing before the board.

The public has until April 9 to comment on both sets of rules, with full implementation of the act set for Sept. 16.

Subscribe to Closing Arguments

Sign up for new weekly newsletter Closing Arguments to get the latest about ongoing trials, major litigation and hot cases and rulings in courthouses around the U.S. and the world.

Email *

Submit