The US Patent and Trademark Office (PTO) published a final rule to amend the existing rules of practice for inter partes review, post-grant review, and the transitional program for covered business method patents and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act. Federal Register, Vol. 81, No. 63 at 18750 et seq. April 1, 2016. Last year, the PTO published a final rule addressing certain ministerial changes, including an allowance for 10 additional pages for a patent owner’s motion to amend and 10 additional pages for a petitioner’s reply brief (IP Update, Vol. 18, No. 6). 

The new rules make only a few changes to the existing rules. The major changes are as follows:

  • The patent owner is now permitted to submit new testimonial evidence in support of the preliminary response.

Practice Note: This change creates new strategic considerations for the patent owner, as it may not always be advantageous to submit an expert declaration with the preliminary response. Instead, it may be strategic to wait for the institution decision by the Patent Trial and Appeal Board (PTAB or Board) before locking in witness testimony. Doing so allows the patent owner to craft its post-institution case based on the Board’s concerns, and also preserves some new evidence for the post-institution trial. If the same three judges are looking at the exact same evidence and arguments pre- and post-institution, the trial phase may mirror the institution decision in terms of the patentability of the challenged claims. The strategy of submitting new testimonial evidence with a preliminary response is made even more complicated by a new provision that provides that “a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner.” See 37 CFR § 42.108. Most testimonial evidence submitted by a patent owner would create a material issue of fact. As a result, these factual disputes will be resolved against the patent owner for purposes of the institution decision.

  • The PTO maintains the broadest reasonable interpretation claim construction standard, unless the patent will expire before the final written decision is issued. The final rule provides that a party may request, by motion, a “district court-type claim construction approach” where the patent at issue will expire within 18 months of the entry of the Notice of Filing Date. See 37 CFR § 42.300. The motion must be made within 30 days from the filing of the petition.

Practice Note: The Board apparently will resolve the claim construction standard on a case-by-case basis for patents that will expire during the course of the post-grant proceeding.

  • The new rules reinforce the duty of candor in Board proceedings and provide that the signature on any document filed with the Board is a representation, among others, that the action is not being conducted “for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of the proceeding.” See 37 CFR § 42.11, 11.18(b)(2).

The proposed rules also provide new procedural rules for sanction motions, including a requirement to serve the accused party with a copy of the motion 21 days prior to seeking authorization to file a motion for sanctions. This provision gives the accused party an opportunity to correct the challenged error.

Practice Note: It is unclear what an “improper purpose” encompasses. 

  • The new rules replace page limits with word counts for the petition, patent owner preliminary response and petitioner’s reply brief. For example, a petition for inter partes review is now limited to 14,000 words instead of 60 pages. The Board retains page limits for all other briefings, however. 

Practice Note: This rule change will allow claim charts to contain lawyer argument, since such argument in singe-spaced claim charts will no longer be considered as a way to circumvent the page limits.

The new rules are effective as of May 2, 2016.