USPTO Announces Proposed Rule Changes for AIA Trials

Andrew B. Freistein

August 21, 2015

On August 20, 2015, the USPTO issued a Notice proposing changes to the Rules of Practice Before the Patent Trial and Appeal Board “PTAB”. These proposed rule changes were expected in view of the USPTO’s request for comments on AIA trial proceedings issued in June 2014 and Director Michelle Lee’s “quick fix” changes in March 2015. Specifically, the following changes are proposed:

• New Evidence in a Patent Owner’s Preliminary Response: Permitting a patent owner to include new testimonial evidence, such as an expert declaration, with the patent owner’s preliminary response in opposition to a petition to institute an inter partes review (“IPR”) or post-grant review (“PGR”).
• Broadest Reasonable Interpretation (BRI) Claim Construction: Continuing to apply the BRI standard in construing the claims of unexpired patents in IPR, PGR and covered business method (“CBM”) proceedings.
• Rule 11-Type Sanctions: Adopting a “Rule 11-type certification” by attorneys in all papers filed with a provision for sanctions for noncompliance.
• Word Count Limits: Changing the “page limit” to a “word count” limit for petitions, patent owner preliminary responses, patent owner responses, and petitioner’s replies. The IPR petition/response limit is 14,000 words, and the PGR/CBM limit is 18,700 words.
• Service of Demonstrative Exhibits: Requiring demonstrative exhibits to be served at least 7 days (rather than 5 days) before oral argument, and requiring the exhibits to be filed no later than the time of the oral argument.

The Notice also responds to the June 2014 request for comments covering the following topics: Claim Construction Standard, Patent Owner’s Motions to Amend, Patent Owner’s Preliminary Response, Additional Discovery, Obviousness, Real Party in Interest, Multiple Proceedings, Extension of One Year Period to Issue a Final Determination, Oral Hearing, and General Topics (such as, using confidential information, designating precedential and informative decisions, updating the Office Patent Trial Practice Guide, improving the PTAB’s docketing system, estoppel, and expanding the 3-judge panel).
Written comments on the proposed rule changes are due by October 19, 2015.

The Notice is available here: http://www.gpo.gov/fdsys/pkg/FR-2015-08-20/pdf/2015-20227.pdf