In a recent blog entry (PTAB’S Quick-Fixes for AIA Rules Are to Be Implemented Immediately posted March 27, 2015), Michelle Lee, Director of the USPTO, discussed the USPTO’s three-part plan to improve the trial process of post grant proceedings before the PTAB. The first-part is being referred to by the USPTO as “quick fixes” and should be issued this spring; the second-part, which will propose more significant rule changes, should be issued later this summer; and the third-part will be changes to the USPTO’s Trial Practice Guide.
The first-part will be limited to fairly simple changes. For example, the fifteen page limit for both motions to amend and petitioner’s reply briefs will be increased to twenty-five pages. Director Lee indicated that PTAB judges can grant the increased page limits via scheduling orders effective immediately. With respect to the second-part, the USPTO is considering changes to the current motion to amend process to make it easier for the patent owner to amend claims; evidence that can be provided by the patent owner in its preliminary response; scope of additional discovery; handling of multiple proceedings involving the same patent; and use of live testimony at oral hearings. In the third-part, the USPTO will consider making permission for live testimony at the oral hearing easier to obtain; ensuring sufficient discovery with respect to establishing the real-party-in-interest; and having a single judge make the decision with respect to instituting a trial.
It appears from Director Lee’s blog entry that at least some of the upcoming changes should provide some much needed help to patent owners in defending their patents in post grant proceedings before the PTAB, which, to date, have been difficult on patent owners.