On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) released a proposed rule package in response to public feedback, making what it classifies as “more involved” changes to the rules governing AIA trial proceedings, also known as Patent Trial and Appeal Board (PTAB) trial proceedings. The rules published on August 20, 2015 and follow the more “ministerial changes” the USPTO issued in May 2015. The USPTO is soliciting comments from the public on the proposed rules with comments due by October 19, 2015 (60 days from publication). The USPTO will also discuss the proposed rules in its upcoming Road Show series scheduled for August 24, 2015 (Santa Clara, CA), August 26, 2015 (Dallas, TX), and August 28, 2015 (Alexandria, VA).

The proposed rules impact five main aspects of the proceedings:

Pre-Institution

  • The proposed rules allow patent owners to submit new testimonial evidence with a preliminary response and permit petitioners to seek authorization to file a reply to a patent owner’s preliminary response.
  • The proposed rules specify that the Board will view disputed material facts in the light most favorable to the petitioner when deciding whether to institute.

Claim Construction

  • The proposed rules clarify that the broadest reasonable interpretation standard will apply to claims that will not expire before a final written decision.
  • The plain and ordinary standard, however, will apply to claims that will expire before a final written decision.

Word Count

  • The proposed rules eliminate current page limits and instead implement word count limits for petitions, patent owner preliminary responses, patent owner responses, and petitioner replies. The new limits do not include: a table of contents, a table of authorities, a certificate of service or word count, exhibits, appendices, or claim listings.
  • In particular, the proposed rules implement the following limits:
    • Petition for inter partes review: 14,000 words (changed from 60 pages),
    • Petition for post grant review: 18,700 words (changed from 80 pages),
    • Petition for covered business method review: 18,700 words (changed from 80 pages),
    • Petition for derivation proceeding: 14,000 words (changed from 60 pages),
    • Patent owner preliminary responses and patent owner responses are the same as the corresponding petition,
    • Petitioner replies (all proceedings): 5,600 words (changed from 25 pages).
  • The current page limits for motions, including motions to amend, oppositions, and replies are unchanged.
    • Motions, other than motions to amend: 15 pages,
    • Oppositions to motions, other than motion to amend: 15 pages,
    • Replies to oppositions, other than oppositions to motions to amend: 5 pages
    • Motions to amend: 25 pages,
    • Oppositions to motions to amend: 25 pages,
    • Replies to oppositions to motions to amend: 12 pages.

Oral Argument

  • The proposed rules require any demonstrative exhibits to be served at least seven business days before the oral hearing.
  • In addition, the USPTO will provide further guidance within the FAQ section on the PTAB website clarifying the requirement that parties are limited to presenting arguments at oral hearing that were specified in the oral hearing request.

Duty of Candor-Sanctions

  • The proposed rules supplement the current duty of candor requirement with a “Rule-11” type certification for all papers filed with the Board.
  • In particular, the proposed rules expressly set forth that an attorney, registered practitioner, or unrepresented party certifies by signing, filing, submitting, or later advocating, that all representations made to the Board are, to the best of the person’s knowledge, information, and belief, formed after reasonable inquiry under the circumstances:
    • not presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of a proceeding,
    • include claims, defenses, or other contentions warranted by existing law or by a non-frivolous argument for extending, modifying, or reversing existing law,
    • based on factual contentions that have evidentiary support, and
    • based on denials of factual contentions warranted by the evidence.
  • The proposed rules also revise sanctions and specify that the Board can impose sanctions on an attorney, registered practitioner, law firm, patent agent, or party that violated the required certification.
    • A law firm will be held jointly responsible for a violation committed by its partner, associate, or employee absent exceptional circumstances.
    • Sanctions must be consistent with the current practice under Rule 42.12.
  • Sanctions can be sought by motion or on the Board’s initiative.
  • The new “Rule-11” certification does not apply to disclosure and discovery requests, responses, or objections.

The proposed rules formally implement some of the current Board practices (e.g., claim construction, demonstratives), which should have little impact on future proceedings. The proposed rules also implement some changes that should be beneficial to patent owners, including, e.g., allowing new testimonial evidence before the Board decides institution and replacing page limits with word count limits. In addition, the proposed rules implement a more explicit duty of candor and good faith for all persons practicing before the Board. While the proposed rules include several comments and responses related to motions to amend and multiple proceedings (joinder, stays), the proposed rules do not include any substantive changes to these areas of practice. However, the USPTO will publish a revised Office Patent Trial Practice Guide with the final rules package, so more guidance may be forthcoming.