Fortnight’s Extension Reluctantly Granted by Squires on Comments to Proposed IPR Practice Rule

Fortnight’s Extension Reluctantly Granted by Squires on Comments to Proposed IPR Practice Rule

The USPTO has announced that it is extending by 15 days the comment period for a proposed rule published on October 17 in response to requests from stakeholders. 

The USPTO has announced that it is extending by 15 days the comment period for a proposed rule published on October 17 in response to requests from stakeholders.

The notice of proposed rulemaking (NPRM) titled “Revision to Rules of Practice before the Patent Trial and Appeal Board” has as its stated goal “to focus inter partes review proceedings on patent claims that have not previously been challenged in litigation or where prior litigation was resolved at an early stage.” Under current practice, the Office is concerned that even extremely strong patents become unreliable when subject to serial or parallel challenges,” a press release on the NPRM said.

The deadline for comment has been extended from the original November 17 to December 2.

As per the Federal Register, 498 comments have been received so far at Regulations.gov. One of the comments, titled, “Request for extension of time to comment” was submitted by organizations including the Electronic Frontier Foundation (EFF), The App Association, the High-Tech Inventors Alliance, Unified Patents, United for Patent Reform, and several others.

The deadline be extended one month to December 17, that comment urged, and claimed, “the proposed rules…would represent a significant shift in the implementation of the America Invents Act validity reviews and their relation to district court litigation and other proceedings.”

Analysis of such a significant change “requires substantial analysis—and even more effort is required to assess how the rules may affect future litigation strategies…. Thirty days is plainly an insufficient time period to gather comments on a rule of this significance,” the comment added.

The Office’s email included a statement from USPTO Director John Squires making it clear that “although the previous Administration could not get it done, it is now past the time for concluding the process and issuing a final rule” on discretionary denial practice at the Patent Trial and Appeal Board (PTAB).” Squires added, “For nearly four years, this Office has promised, discussed, and debated formal rulemaking on discretionary denial practice at the Patent Trial and Appeal Board… While we endeavour to be responsive to stakeholders—and indeed are by granting an additional 15 days today for comment, on top of the 30-day period originally noticed—45 days total has now been provided. This is an ample amount of time to respond, certainly in light of history here, and particularly in view of the wide-ranging and thorough airing these issues have received across our stakeholder communities over the past four years. Now’s the time.”

The proposed rule makes several changes such as requiring an IPR petitioner to file a stipulation not to pursue invalidity challenges under 35 U.S.C. §§ 102 or 103 in other forums; providing the USPTO will not institute an IPR when the USPTO or another forum has already adjudicated patentability or validity of the claims; providing that the USPTO will not institute an IPR when another proceeding is likely to determine patentability or validity of the claims under §§ 102 or 103 first; and permitting the USPTO to institute an IPR notwithstanding a prior adjudication or expected earlier determination on patentability or validity when exceptional circumstances exist.”

The Office officially withdrew a 2024 NPRM by USPTO Director Kathi Vidal on the same day the NPRM was published. This NPRM proposed to codify several changes around serial and parallel petitions practices; rules for briefing on discretionary denial requests; termination and settlement agreements; and the factors for consideration of discretionary denials.