On March 31, 2016 the PTO finalized a set of new rules that will affect post-grant proceedings under the AIA, including inter partes review (IPR), covered business method review (CBM), and post-grant review (PGR). The new rules are scheduled to take effect in 30 days, and will impact both petitioners and patent owners.
Under the current rules, a patent owner is prevented from submitting new testimonial evidence (e.g., an expert declaration) before the institution decision. As such, a petitioner can submit an expert declaration with the initial petition, but the patent owner cannot do so in its preliminary response. In such circumstances, the Board must usually decide whether to institute the IPR, CBM, or PGR after considering expert testimony from only one side. The new rules will change this process by amending 37 C.F.R. 42.23(b) so that patent owners will be allowed to submit new testimonial evidence without any limit on scope when filing the preliminary responses. Of course, given the fact that neither side will be able to cross-examine the expert witnesses at the preliminary stage before the institution decision, the Board might have to grapple with two experts that reach opposite conclusions or establish a genuine issue of material fact. The new rules will also require the Board—at the posture of the institution decision—to view any such “genuine issue of material fact created by such testimonial evidence” in the light “most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.”
Another new rule change will provide the Board with more “teeth” in the event a practitioner flouts his or her duty of candor to the Patent Office. Namely, 37 C.F.R. 42.11 will be amended to require a “Rule 11-type Certification” for practitioners signing the papers filed in IPRs, CBMs, and PGRs. The Patent Office views this new rule change as preventative in nature or otherwise providing a deterrent effect.
Other rule changes clarify claim construction issues (especially where the challenged patent will expire during the proceeding), the exchange of exhibits before an oral hearing, and changing limits from a “page count” to a “word count.” This latter category, albeit having the appearance of a simple formatting rule, may actually result in a reduction in the amount of space available for meaningful text in many petitions, responses, and replies. For example, 37 C.F.R. 42.24 will be amended so that the 60-page limit for IPR petitions is now replaced with a “14,000” word limit. There are numerous instances, however, of 60-page IPR petitions filed over the past year that were in the range of 17,000-19,000 words. Those petitions were acceptable under the original rules (and indeed were accepted). But under the new rules, those Petitions would be roughly 10-15 pages too long. The reductions are also applicable to patent owner responses and petitioner replies. For some practitioners, the new rules could implement a significant reduction (possibly 15-20%) in the amount of text available relative to the current limits.