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USPTO Considering New Rules for Post-Grant Proceedings

On August 20, 2015, the U.S. Patent and Trademark Office (“PTO”) published proposed amendments to the “Rules of Practice for Trials before the Patent Trial and Appeal Board” for IPR, CBM, and PGR proceedings. The proposed rule changes include:

  1. adopting the claim construction standard used in district courts and set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), when a patent is set to expire before a final written decision is expected to issue;
  2. allowing a Patent Owner to introduce new testimonial evidence with a preliminary response;
  3. acknowledging that material facts in dispute will be resolved in favor of the Petitioner when deciding whether to institute a proceeding;
  4. modifying the limits on length for petitions, Patent Owner preliminary responses, Patent Owner responses, and Petitioner replies to implement word count limits that replace the current page limits; and
  5. requiring a Rule 11-type certification for all papers filed with the Board, and including a provision for sanctions for noncompliance.

Additionally, the PTO proposed a new pilot program, under which the determination of whether to institute an IPR would be made by a single Administrative Patent Judge, rather than a panel of three, in order to minimize the PTO’s administrative burden and help it to meet the statutory deadlines. Two additional judges would be assigned to the case after the decision to institute the IPR is made.

The notice and comment period for both the proposed rule changes and the pilot program expired on November 18, 2015. Comments were submitted by over twenty-five intellectual property associations, corporations, lobbying associations, and individuals (available at www.uspto.gov/patent/laws-and-regulations/comments-public-response-specific-requests-uspto). The PTO will review the comments before issuing any final rules.

If the proposed rule changes are implemented, they are expected to have a notable impact on Post-Grant Proceeding procedures. Patent Owners, in particular, should watch for new rules allowing the introduction of testimonial evidence before a proceeding is instituted—a practice that was previously not permitted and has the potential to impact institution rates.