Resources for IPR Procedures, Rules, Submissions and Decisions
August 30, 2013
By Lynne A. Borchers –
During the course of preparing and filing inter partes review (“IPR”) petitions, we found that there is not a centralized location or source that contains IPR procedures and rules, particularly one that includes easily searchable submissions and decisions from the Patent Trial and Appeal Board (“PTAB”).
We have compiled the following exemplary list of helpful resources that we use to prepare and file IPR petitions. The United States Patent and Trademark Office’s (“PTO”) Inter Partes Dispute webpage contains links to the following:
- the Rules of Practice governing all trials before the PTAB (August 14, 2012)
- the Rules for Inter Partes, Post Grant, and Covered Business Method Review (August 14, 2012)
- the Technical Correction to the inter partes review Rules (March 25, 2013), which among other things, eliminated the so-called “IPR Dead Zones”
- the Trial Practice Guide (August 14, 2012)
- the PTO’s 12 Month Implementation Timeline
- Inter Partes Review FAQs
The information in these PTO links goes beyond merely reciting the rules and procedures. The links, for example, contain information on the purpose of the rules; elaborate on the procedures and rules, and include cost estimates for preparing an IPR petition and other IPR submissions.
The PTO’s Patent Review Processing System (“PRPS”) is the PTAB’s e-filing and case management system for trial procedures. The PRPS contains all publicly-available IPR filings, such as petitions, responses, and decisions from the Board. The search capability, however, is limited to searching for an IPR proceeding by case number; patent number or application number; or browsing all of the IPR proceedings by entering “IPR” in the case number field. (The PTO has published a Quick Start Guide for the PRPS with additional search information.)
Given that the PRPS now includes the filings from more than 500 IPR proceedings, it is difficult to locate papers relating to a particular subject, such as Board decisions on a specific issue. For example, there is no search function to locate only discovery motions, motions to amend, or in limine motions. Some vendors have started compiling resources to make such searching possible; for example Bloomberg BNA is currently beta testing a Patent Trial & Appeal Board (PTAB) Challenge Navigator tool, which is marketed as providing “a full-text database of all key filings with the Board.” The Managing Intellectual Property website has also advertised a “database of USPTO post-grant petitions.” However, at least in the near future, it is incumbent on attorneys practicing in the IPR area to continually monitor the documents being filed with the PTAB and pay attention to the issues being raised.