USPTO Rule Changes for PTAB Trial Proceedings

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.