Changes to PTAB Rules Expected Shortly

Back in June of 2014 the USPTO issued a Request for Information in the Federal Register entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board. The notice posed 17 questions to the public. Since that time, the Office has considered the public feedback and has been working on two sets of changes to PTAB current trial practices. 

The first set of changes is expected this month (January). These changes will liberalize current requirements, such as page limits. The January liberalizations will not restrict the present rights of the public in any way. As such, the first round of changes need not go through typical Notice and Comment Rule Making process. Instead, the changes will become final 30 days after they are announced. Expected changes include:

  • identifying additional factors to consider for assessing the need for additional discovery in real-party-in-interest disputes
  • Clarifying that RPI disputes can be raised at any time
  • Switching to a word count system rather than maintaining the current page/margin limits
  • Allowing a claim appendix for motions to amend

The second round of changes will be issued this spring through formal, Notice and Comment Rule Making. The second round of changes will address such issues as claim construction (e.g., when to switch from BRI interpretation for patents close to expiration) and when testimonial evidence might be permitted with a preliminary response. 

Should be an eventful year at the PTAB.