USPTO Issues Rule Amendments for Trials Before PTAB

April 07, 2016
Post by Blog Staff

The United States Patent and Trademark Office issued finalized amendments to the rules for trials before the Patent Trial and Appeal Board. The updated rules were issued in a Federal Register Notice on April 1, 2016, which may be found here. The rules put into final form most of the amendments proposed on August 20, 2015, which pertain to inter partes review (IPR), covered business method review (CBM), and post-grant review (PGR) under the America Invents Act (AIA). The new rules go into effect May 2, 2016.

The major changes to the rules include the following:

  • allowing new testimony in a patent owner preliminary response
  • adding an option for a Phillips-type claim construction for expiring patents
  • implementing word counts instead of page limits for certain filings
  • adding a Rule 11-type certification for papers filed in a proceeding
  • more time for exchange of demonstrative exhibits

Patent Owner's Preliminary Response

Currently, a patent owner is precluded from submitting testimonial evidence, in response the filing of a petition, to support its position not to institute a PTAB trial; the evidence is restricted to that which is already in the record. With the new rule change, a patent owner may file a preliminary response with new testimonial evidence, without any limit on scope.

If the testimonial evidence should cause a genuine issue of material fact to arise, this issue is to be resolved in favor of the petitioner, but only for the purposes of determining whether to institute a trial.

Claim Construction Standard

The PTAB (like the rest of the USPTO) uses a "broadest reasonable interpretation" (BRI) standard for construing claims. Under the new rules, however, a Phillips-type claim construction was deemed to be appropriate in proceedings involving claims of a patent which will expire prior to issuance of a final written decision. However, for such a claim construction to apply, one of the parties must request the adoption of the Phillips claim construction and certify that the patent at issue will expire within 18 month period permitted for these PTAB proceedings. In the absence of such a request, the Board will continue to apply the broadest reasonable interpretation standard in AIA proceedings.

Word Counts

For certain filings, the Office has replaced page limits with word limits. The following changes will apply beginning May 2:

  • Instead of 60 pages, all IPR and derivation petitions, patent owner preliminary responses, and patent owner responses to petition are limited to 14,000 words.
  • Instead of 80 pages, all PGR and CBM petitions are limited to 18,700 words.
  • Instead of 25 pages, replies to patent owner responses to petitions are limited to 5,600 words.

All remaining filings continue to have existing page limits.

Rule 11-type Certification

As a part of the duty of candor owed to the Office, a certification will be required for all papers filed with the Office, which establishes that the paper is submitted in good faith, similar to the requirements of Rule 11 of the Federal Rules of Civil Procedure. The new rules also provide a procedure for sanctions that did not exist previously.

Exhibits for Oral Hearing

The Office has amended the rules to require that parties exchange exhibits seven business days before oral argument, extending the time from five days.

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