In a March 27 blog post, Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the US Patent and Trademark Office, outlined changes that the USPTO intends to make in order to make things easier for patent owners under the America Invents Act (AIA).

The rules for proceedings under the AIA were first introduced in 2012. In the summer of 2014, the USPTO requested public comments on how to improve the rules.

The USPTO received 37 written comments from interested parties including patent lawyers, large corporations like IBM and Cisco, organizations like the American Bar Association and the Electronic Frontier Foundation.

In response to these comments, the USPTO will roll out changes in three stages, starting this spring.

The first changes will be “quick fixes,” including increasing the number of pages for motions.

The USPTO is considering additional changes that will affect the proceedings at the Patent Trial and Appeal Board Trial (PTAB), including:

  • adjusting the scope of discovery
  • changing the handling of multiple proceedings involving the same patent
  • allowing live testimony at oral hearings

Real Parties in Interest

The proposed rule changes also deal with the issue of identifying the “real party in interest” in a patent dispute. The phrase “real party in interest” means the individual or business entity that would benefit from the sought outcome of a lawsuit. Critics charge that so-called “patent trolls” may hide behind shell companies, thus concealing the real party in interest.

According to Lee’s blog:

We understand that the existence of ample discovery to establish the real-party-in-interest (RPI) of the petitioner has been a concern…. While the Board increasingly has been granting motions for such discovery, we plan to update the Trial Practice Guide to emphasize the importance of RPI discovery as to determinations of standing and as to possible later estoppel consequences.

No More “Death Squads”?

Since the introduction of the AIA, the PTAB has sometimes been called a “death squad” for patents, with a high percentage of claims being denied when challenged.

These proposed changes may lead to a less hostile environment for patent owners.