Office Patent Trial Practice Guide, July 2019 Update

Citation84 FR 33925
Record Number2019-15083
Published date16 July 2019
SectionNotices
CourtPatent And Trademark Office
Federal Register, Volume 84 Issue 136 (Tuesday, July 16, 2019)
[Federal Register Volume 84, Number 136 (Tuesday, July 16, 2019)]
                [Notices]
                [Pages 33925-33926]
                From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
                [FR Doc No: 2019-15083]
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                DEPARTMENT OF COMMERCE
                Patent and Trademark Office
                [Docket No.: PTO-P-2019-0025]
                Office Patent Trial Practice Guide, July 2019 Update
                AGENCY: United States Patent and Trademark Office, Commerce.
                ACTION: Notice.
                -----------------------------------------------------------------------
                SUMMARY: The United States Patent and Trademark Office (``Office'')
                issued a further update to the Office Patent Trial Practice Guide
                (``TPG'') in July 2019 to provide updated guidance to the public on
                standard practices before the Patent Trial and Appeal Board (``Board'')
                in the post-grant trial procedures implemented following the Leahy-
                Smith America Invents Act (``AIA''). The Office published the TPG to
                provide practitioners with guidance on typical procedures and times for
                taking action in AIA trials, as well as to ensure consistency of
                procedure among panels of the Board.
                FOR FURTHER INFORMATION CONTACT: Michael Tierney and William Fink, Vice
                Chief Administrative Patent Judges, by telephone at (571) 272-9797.
                SUPPLEMENTARY INFORMATION: The Office issued a further update to the
                TPG in July 2019, to update the guidance set forth in the TPG by
                incorporating the Board's current practices and precedential decisions,
                and to provide further explanation of certain aspects of the Board's
                practices to the public. The Office previously issued an update to the
                TPG in August 2018. The TPG is
                [[Page 33926]]
                divided into sections, each directed to a particular stage of a typical
                AIA trial proceeding or a specific issue commonly encountered during
                such proceedings. Thus, the TPG contains informative material and
                outlines the current procedures that panels of the Board typically
                follow in appropriate cases in the normal course of an AIA trial
                proceeding. In order to expedite these updates and provide guidance to
                the public as quickly as possible, the Office has chosen to issue
                updates to the TPG on a section-by-section, rolling basis, rather than
                a single, omnibus update addressing all aspects of the current TPG. The
                Office anticipates releasing further revisions of the TPG on a periodic
                basis, to take into account feedback received from stakeholders,
                changes in controlling precedent or applicable regulations, or the
                further refinement of the Board's practices over time.
                 The July 2019 update revises Sections I.A.2. (Prohibition on Ex
                Parte Communications), I.E.4. (Protective Orders), I.F.2. (Additional
                Discovery), I.F.5. (Live Testimony), II.B.6. (Claim Construction),
                II.C. (Patent Owner Preliminary Response), II.D.2. (Considerations in
                Instituting a Review), II.D.3. (Content of Decision on Whether to
                Institute), II.G. (Motions to Amend), II.H. (Opposition to a Motion to
                Amend), II.I. (Reply to Patent Owner Response and Reply to Petitioner
                Opposition to a Motion to Amend), II.J. (Other Motions), II.O. (Final
                Decision), II.P. (Rehearing Requests), and Appendix B (Protective Order
                Guidelines).
                 The July 2019 update of the TPG, containing only the revised
                sections, may be viewed or downloaded from the USPTO website at https://www.uspto.gov/TrialPracticeGuide3. The TPG update from August 2018 is
                available at https://go.usa.gov/xU7GP and the full version of the
                August 2012 TPG continues to be available for reference on the USPTO
                website at https://go.usa.gov/xU7GK.
                 Dated: July 10, 2019.
                Andrei Iancu,
                Under Secretary of Commerce for Intellectual Property and Director of
                the United States Patent and Trademark Office.
                [FR Doc. 2019-15083 Filed 7-15-19; 8:45 am]
                BILLING CODE 3510-16-P
                

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