On April 1, 2016, the U.S. Patent and Trademark Office (USPTO) issued amended final rules that govern trials under the America Invents Act (AIA), including inter partes review, post-grant review, covered business method review, and derivation proceedings. The new final rules take effect on May 1, 2016. Here is a summary of four new rules that you need to know:

1. Expert Declarations Are Now Permitted To Support A Patent Owner's Preliminary Response

37 C.F.R. §§ 42.108(c) & 42.208(c); Deletion of 37 C.F.R. §§ 42.107(c) & 42.207(c)

A patent owner is now permitted to submit testimonial evidence to support its preliminary response to a petition. This change attempts to better balance the parties’ pre-institution positions by allowing both sides to submit expert declarations before the Patent Trial and Appeal Board (PTAB) makes a decision on institution. However, the new rules contain an important caveat—any genuine issue of material fact created by a patent owner’s testimonial evidence will be resolved in favor of the petitioner during the pre-institution period.

2. Phillips-TypeClaim Construction Can Be Requested For Soon-To-Be Expired Patents

37 C.F.R. §§ 42.100(b), 42.200(b) & 42.300(b)

Either party may now request a district court-type claim construction under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) for patents that will expire within 18 months from the filing date of the petition. The request for a Phillips-type claim construction must be made by motion and filed within 30 days of the petition. All other patents will remain subject to the broadest reasonable interpretation (BRI) claim construction standard. The propriety of the PTAB’s use of the BRI claim construction standard will soon be addressed by the U.S. Supreme Court in the pending case of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 890 (mem.) (2016).

3. Major Briefing Is Subject To A Word Count Limit, Instead Of A Page Count Limit

37 C.F.R. § 42.24

Petitions, patent owner preliminary responses, patent owner responses, and replies to patent owner responses are subject to a new word count limit, in contrast to the previous page count limit. Petitions for inter partes review and derivation proceedings may contain a maximum of 14,000 words, rather than the previous 60 pages. Petitions for post-grant review and covered business method review are limited to 18,700 words, rather than the previous 80 pages. Patent owner preliminary responses and patent owner responses must meet the same word limitations as petitions. Replies to patent owner responses may have 5,600 words, instead of the previous 25 pages. In addition, petitions will no longer be reviewed to determine if claim charts contain arguments. All other briefings remain subject to the old page count limits.

4. A Rule 11-Type Certification Is Required

37 C.F.R. § 42.11

The updated final rules require attorneys and unrepresented parties to submit Rule 11-type certifications along with their filings. The rule change increases the USPTO’s ability to police attorney misconduct and provides a mechanism for sanctions.

Effective Date is May 1, 2016

The final rules will apply to all AIA petitions filed on or after May 1, 2016, as well as to any AIA preliminary proceedings or instituted trials pending at the USPTO on that date. Be on the lookout for the USPTO to provide an updated Office Patent Trial Practice Guide in light of the new final rules.

Rejected Single Judge Pilot Program

Along with the new rules, the USPTO indicated that it will not institute the Proposed Pilot Program that would have allowed a single judge to decide whether to institute a trial. Instead, institution decisions will continue to be made by a panel of three judges.

Conclusion

You may need to reconsider and modify strategies for your AIA trials in light of the new final rules. Please contact us if you would like additional information or to discuss how the new final rules may impact you.