Part of being a patent lawyer is understanding how the new PTO rules will be implemented. Of course with the new post grant proceedings available on September 16, 2012, we have many new rules plus a new decision-making body, the Patent Trial and Appeal Board (PTAB).
How will PTAB interpret the new rules relating to inter partes review?
We only have one decision on what is required for a petition to obtain a filing date, but for what it is worth Ariosa Diagnostics v. Isis Innovation Limited suggests the PTAB can play hardball.
After Ariosa Diagnostics (Petitioner) filed a petition for inter partes review of U.S Patent No. 6,258,540, owned by Isis Innovation Limited, the PTAB decided the petition would not be granted a filing date because it had the following deficiencies: (1) Exhibits 1011, 1012, 1028, and 1030 didn't match the Exhibit List; (2) the Exhibit List stated Exhibits 1029 and 1032 were "Intentionally Left Blank," but they weren't blank (Exhibit "1029" was a duplicate of Exhibit 1027 and Exhibit "1032" was a duplicate of Exhibit 1031); (3) Petitioner's addresses (e-mail, postal and hand delivery) and phone were missing; and (4) the Petition failed to clearly designate lead and back-up counsel.
OK. The Ariosa attorneys did not submit a "perfect" petition. 37 CFR 42.106 says to be granted a filing date the petition for inter partes review must include the required inter partes fee (37 CFR 42.103), the petitioner must serve the petition and exhibits on the patent owner (37 CFR 42.105), the content of the petition must identity of the challenged claims, the basis for the challenge the evidence supporting the challenge, and a certification that the petititioner is not barred or estopped from filing the petition (37 CFR 42.104).
The PTAB decision doesn't refer to 37 CFR 42.105, but it appears the PTAB may consider the mixed up exhibits and list a failure to "serve exhibits" on the patent owner. I think people will now be triple checking their exhibit lists, exhibits, and other petition papers to ensure getting a filing date.
One last question: If the Petitioner's addresses (e-mail, postal and hand delivery) and phone are missing, did they get the Notice of Incomplete Petition?
Copyright © 2012 Robert Moll. All rights reserved.