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USPTO Proposes Amendments to the PTAB Trial Practice Rules
Practical Law Legal Update 5-618-2567 (Approx. 3 pages)
USPTO Proposes Amendments to the PTAB Trial Practice Rules
by Practical Law Intellectual Property & Technology
| Published on 19 Aug 2015 • USA (National/Federal) |
The US Patent and Trademark Office (USPTO) has announced proposed amendments to the Patent Trial and Appeal Board (PTAB) trial practice rules and is seeking public comment.
On August 20, 2015, the USPTO published a notice announcing proposed amendments to the rules concerning Patent Trial and Appeal Board (PTAB) trial practice for inter partes review, post-grant review, the transitional program for covered business method patents and derivation proceedings. The USPTO is seeking public comment on the proposed amendments (80 Fed. Reg. 50720-01 (August 20, 2015)).
In an effort to make PTAB trial proceedings more transparent and effective, the USPTO sought feedback in 2014 on the following ten topics:
- The claim construction standard for PTAB trials.
- A patent owner's motions to amend.
- A patent owner's preliminary response.
- Additional discovery.
- Obviousness.
- Real party in interest.
- Multiple proceedings.
- Extension of the one year period to issue a final determination.
- Oral hearing.
- General topics.
The proposed rules address issues and public comments concerning these topics. Specifically, under the proposed rules:
- The PTAB would give the broadest reasonable interpretation to claims in an unexpired patent that will not expire before it issues a final, written decision.
- The patent owner would not be prohibited from including new testimonial evidence with a preliminary response.
- The parties would have seven days before oral argument to exchange exhibits.
- Word count limits would be added to petitions, patent owner preliminary responses, patent owner responses and petitioner replies.
- A Rule 11-type certification would be added for all papers filed with the PTAB with a provision for sanctions for non-compliance.
The USPTO also plans to revise the Patent Trial Practice Guide to reflect guidance concerning:
- Additional discovery.
- Discovery of non-obviousness evidence held by the petitioner.
- Challenges regarding a real party in interest.
The USPTO also noted that under a recent PTAB decision, it clarified that a patent owner must argue for patentability of proposed substitute claims over the prior art of record, and any other prior art or arguments supplied by the petitioner, in connection with the requirement that proposed substitute claims be narrower than the claims that are being replaced.
The USPTO also seeks input for possible future rulemaking concerning the attorney-client privilege or other limitations on discovery in PTAB proceedings, including whether such rules should be issued for PTAB proceedings.
Interested parties may submit written comments on or before October 19, 2015 by mail, electronically by e-mail to [email protected] or via the Federal eRulemaking Portal website.