On March 27, 2015, the director of the U.S. Patent and Trademark Office (PTO) announced several quick fixes in response to public comments on proposed revisions to the rules for inter partes review (IPR), post grant review (PGR) and covered business method (CBM) review. One of the quick-fix changes is to increase the number of pages for a motion to amend from 15 to 25 pages, along with the addition of a claims appendix (with a commensurate amount of additional pages for the opposition and reply briefs). Patent Trial and Appeal Board (PTAB or Board) judges have been instructed to implement these rule changes immediately.
In addition to these immediate changes, the PTO is considering a number of additional rules changes, to be subject to public comment, expected to be released sometime this summer. This second rule package will include further modifications to the motion to amend process, adjustments to the evidence that can be provided by the patent owner in its preliminary response and clarification of the claim construction standard as applied to expired patents in AIA proceedings. Also being considered are adjustments to the scope of additional discovery, how to handle multiple proceedings before the PTO involving the same patent, use of live testimony at oral hearings and whether parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation.
Regarding motions to amend, the PTO is contemplating proposed changes to emphasize that a motion under substitute narrower claims by amendment will always be allowed to come before the Board for consideration (i.e., be entered), for such an amendment to result in the issuance (patenting) of the amended claims a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office.
The PTO is also contemplating changes to the Trial Practice Guide, including clarifying the use of live testimony at hearings. The PTO also plans to update the Trial Practice Guide to emphasize the importance of real party in interest discovery for determinations of standing and as to possible later estoppel consequences. Finally, the PTO is considering a single-judge pilot program, under which a single judge would make the institution decision. Two additional judges would join the panel only when and if a trial is instituted. In the interest of efficiency, the first judge would remain on the panel, but given the countervailing interest of having “fresh eyes,” the two additional judges would not have participated in the matter prior to institution.