On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) released a set of proposed rule changes that affect the post-issuance patent review proceedings governed by the Patent Trial and Appeal Board (PTAB). As noted in a blog post announcing the release, this is the second iteration of rule changes concerning the America Invents Act (AIA)-created inter partes review (IPR), post-grant review (PGR), and transitional program for covered business method patents (CBM)—the first included a few “quick fixes” enacted earlier this year. While the proposed changes have no effect until a final rulemaking in the future, the USPTO encourages practitioners to review the developments and, if inspired, participate in the comment period that is open until October 19, 2015.
The new proposed rules cover a broad range of topics, but some of the most significant changes concern the patent owner’s preliminary response to a petition for IPR. For example, the new proposed rules allow a patent owner to include new testimonial evidence with its preliminary response. This is in contrast to the current rules, which prohibit the introduction of any such evidence. The proposed rules also point out that there is no right to cross-examination of a declarant before institution of an IPR and, as a result, any factual disputes will be resolved in favor of a petitioner for the purpose of deciding whether to institute an IPR. Further, petitioners will be able to seek permission to file a reply brief to a patent owner’s preliminary response where new testimonial evidence is introduced with the response, but there will be no right to file such a reply.
The proposed rules also change the existing page-count limit to a word-count limit for the initial petition, patent owner’s preliminary response, patent owner’s full response following institution, and petitioner’s reply brief. The proposed rules suggest that this change may relax the PTAB’s prohibition on including arguments in claim charts, as the single-spaced charts will no longer present a possible vehicle for bypassing a document page limit.
A number of other important changes are included as well, such as the adoption of a Rule 11-like certification for all papers submitted to the PTAB and an exception to the use of the broadest reasonable interpretation standard in cases where claim amendments are not possible due to expiration of a patent during a proceeding. The USPTO will accept comments on the proposed rules until October 19, 2015, and is hosting several “road shows” in August 2015 to discuss the proposed rules. Of course, Nutter will continue to monitor the progress of these rules and report further once a final rulemaking is issued.
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