Page Limit Changes Effective Immediately for All AIA Trial Filings
The USPTO's Patent Trial & Appeal Board (PTAB) has announced some of their "quick fix" rule changes today in advance of the anticipated Federal Register Notice. In addition to expected changes to page limits, the Director also mentioned other changes that may be proposed through typical notice & comment rule making later this year. The immediate changes are directed to page limits, including:
- Motions to Amend are now limited to 25 pages (formerly 15 pages), and the claims may be attached as an appendix.
- Petitioner Reply Briefs are now limited to 25 pages (formerly 15 pages)
Later this year, more significant changes will be proposed, but are unlikely to be finalized until 2016, including:
Proposals (Expected Summer 2015)
The following proposals will be published as notice and comment rule making this summer:
- Allowing some form of new testimonial evidence in patent owner preliminary responses
- Revising the motion to amend showings to be limited to the art of record; certification statement as to other known art.
- Guidance on claim construction practices for soontoexpire patents
- Treatment of multiple agency proceedings involving the same patent
- Liberalizing discovery standards for RPI disputes
- Clarifying the Trial Practice Guide (e.g., availability of live testimony)
- Require Rule 11 certifactions for attorneys filing papers
- Establish a pilot program where a single Administrative Patent Judge (APJ) orders institution, this judge will then be joined by two others for a final written decision (FWD).
Whether or not some of these changes are implemented as proposed, will largely depend on comments received in response to the official rule notice. For example, it is unlikely that live testimony will ever be a common event in Inter Partes Review (IPR). That said, the Board seems at least interested in softening the public stance on this option based on due process criticisms. Similarly, while the use of one APJ at institution is unlikely to make a practical difference in outcomes, these changes are responsive to criticisms as to potential panel biases.
The proposed changes to the amendment process will offload much of the burden required of current motions to the duty of candor. I would expect amendments to become far more common once this is implemented, which is a good thing. On the other hand, any patent amended under such a scenario that exits the PTAB will keep inequitable conduct experts busy for years to come. Still, given the limited resources of the agency, this is probably about as sensible a solution to the amendment conundrum as can be managed. Overall, the page limit revisions are a welcomed change. Likewise, the proposed changes for later this year seem promising in terms of silencing critics.
Now that the agency is out in front of many of the most common PTAB criticisms, and Supreme Court case law is out in front of much of the patent reform debate, this is yet another strong indication that the system is selfcorrecting without the need of further meddling of Congress.