New Trial Practice Rules Effective May 1st

The USPTO has issued new final rules today to make targeted modifications for AIA trial practice before the Patent Trial and Appeal Board (PTAB). (here) These amendments to the rules were initially proposed to the public in August 2015. The rule changes apply to all AIA petitions filed on or after the May 1st and to any ongoing AIA preliminary proceeding or trial before the Office.

The final rule package also explains that the proposed SIngle APJ Pilot Program has been dropped.

The biggest change introduced by the final rule package is the ability to submit new testimonial evidence with a preliminary response. Since the timing provision would appear to apply retroactively to pending proceedings (as of May1st), Patentees may be scrambling in the short term to develop such testimony for AIA challenges filed within the last 2-3 months. Whether or not such testimony is advisable will be explored in a post next week.

The full list of changes is as follows:

  • Allow patent owners to include, with their preliminary response to a petition, any relevant testimonial evidence, addressing concerns that patent owners are disadvantaged by previous rules that limited the evidence that could be presented with their preliminary response to the petition;
  • Add a Rule 11-type certification for papers filed in a proceeding;
  • Clarify that the PTAB will use the claim construction standard used by district courts for patents that will expire during a proceeding and therefore, cannot be amended, while confirming the use of broadest reasonable interpretation (BRI) for all other patents; and
  • Replace the current page limit with a word count limit for major briefings.

Now that the Rule changes are complete, the USPTO also is slated to move forward to amend its Office Patent Trial Practice Guide to reflect these rule changes and developments in practice concerning how the USPTO handles motions to amend, additional discovery, real party-in-interest and privy issues, and confidential information.

Stay tuned.