USPTO Rule Changes for PTAB Trial Proceedings

Navigating Changes to New Testimonial Evidence, Rule 11-Like Requirement, Claim Construction Standard, Motions to Amend, and More

Recording of a 90-minute CLE webinar with Q&A

Conducted on Thursday, October 1, 2015

Recorded event now available

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Program Materials

This CLE webinar will provide patent counsel with an in-depth review of the U.S. Patent and Trademark Office’s (USPTO) newly proposed rule changes for PTAB trial practice. The panel will discuss the potential implications of the changes and address what counsel needs to do now regarding matters that could be impacted if/when the rule is adopted.

Description

On Aug. 19, the USPTO released its proposed rule changes, which amend the rules of PTAB trial practice. The proposed rules would implement the following changes: (1) allow patent owners to submit new testimonial evidence with a preliminary response and permit petitioners to seek authorization to file a reply to a patent owner’s preliminary response; (2) obligate practitioners to provide a “Rule-11” type certification for all papers filed with PTAB; (3) confirm that the broadest reasonable interpretation (BRI) standard will apply to claims that will not expire before a final written decision, and clarify that a Phillips-type claim-construction standard will apply to claims that will expire before a final written decision.

Allowing new testimonial evidence with a Patent Owner Preliminary Response would be a significant development that could drastically change post-grant proceeding practice. The rule change is somewhat tempered, however, by further new language in the rule that “supporting evidence concerning disputed material facts will be viewed in the light most favorable to the petitioner.”

Interestingly, the USPTO did not amend the standards for allowing patent owners to amend claims, although it discussed motions-to-amend practice in the Proposed Rules Commentary. In her blog post of Aug. 19, Director Lee suggested the PTAB is developing a motions-to-amend practice through its own body of decisions, particularly the ones designated “representative.”

Comments on the proposed rule changes are due Oct. 19, 2015. The USPTO plans to issue final rules, based on the input received on these proposals, before the end of the year.

Listen as our authoritative panel of patent attorneys examines the proposed rule changes to PTAB trial practice and discusses the potential implications of those changes. There will also be a discussion of the extensive commentary accompanying the proposed rules. The panel will address the likelihood of the rules being adopted and expected challenges. It will also address what counsel needs to do now regarding matters that could be affected if/when the proposed rules are adopted.

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Outline

  1. Proposed rule changes to PTAB trial practice
  2. Potential implications of the rule changes
  3. PTAB positions on issues raised in the commentary and the impact on future post-grant proceeding practice
  4. Likelihood of the rules being adopted and expected challenges
  5. What counsel needs to do now regarding matters that could be impacted if/when the rules are adopted

Benefits

The panel will review these and other key questions:

  • What is the potential impact of patent owners being able to submit declarations with preliminary responses? How will it change strategy?
  • What approach should patent counsel take regarding the standard of review if the expiration date is in dispute?
  • How will counsel need to alter their approach in light of the proposed rule changes?

Faculty

Flibbert, Michael
Michael J. Flibbert
Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Flibbert has extensive experience in all aspects of patent law, focusing on district court litigation, appeals, and...  |  Read More

Irving, Thomas
Thomas L. Irving
Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Amanda K. Murphy, Ph.D.
Amanda K. Murphy, Ph.D.
Finnegan Henderson Farabow Garrett & Dunner

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new...  |  Read More

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