USPTO Issues Final Rule Amending Rules of Practice for Trials Before PTAB | Practical Law

USPTO Issues Final Rule Amending Rules of Practice for Trials Before PTAB | Practical Law

The US Patent and Trademark Office (USPTO) issued a final rule amending the Rules of Practice for Trials Before the Patent Trial and Appeal Board (PTAB). Changes include increased page limitations and clarifications on discovery and procedural issues.

USPTO Issues Final Rule Amending Rules of Practice for Trials Before PTAB

Practical Law Legal Update 7-613-5626 (Approx. 3 pages)

USPTO Issues Final Rule Amending Rules of Practice for Trials Before PTAB

by Practical Law Intellectual Property & Technology
Published on 18 May 2015 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) issued a final rule amending the Rules of Practice for Trials Before the Patent Trial and Appeal Board (PTAB). Changes include increased page limitations and clarifications on discovery and procedural issues.
On May 19, 2015, the USPTO published a notice announcing a final rule amending the Rules of Practice for Trials Before the Patent Trial and Appeal Board (PTAB) (80 Fed. Reg. 28561-01 (May 19, 2015)). The final rules:
  • Modify rules for motions to amend by allowing:
    • 10 additional pages for a Patent Owner's motion;
    • a claims appendix; and
    • 10 additional pages for the Petitioner's reply brief.
  • Conform the rules to the USPTO's established practices for handling Leahy-Smith America Invents Act (AIA) proceedings, including:
    • requiring a specific font to ensure readability;
    • clarifying that more than one back-up counsel can be named; and
    • clarifying how to count challenged claims to calculate fees.
  • Clarify discovery and procedural issues, including that:
    • a statement of material fact by a party is optional;
    • routine discovery contemplates only cross-examination of affidavit testimony prepared for the proceedings;
    • uncompelled direct testimony must be in the form of an affidavit, not a deposition;
    • motions in limine are not used in AIA practice;
    • objections to evidence should be made part of the record by filing them; and
    • only a single request for rehearing may be filed as of right.
  • Clarify specific rules for covered business method patent (CBM) reviews, including that:
    • CBM reviews may be extended in the case of joinder; and
    • no petition for a CBM review may be filed if the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the CBM patent.
This rule is effective on May 19, 2015.