On March 31, the USPTO issued new final rules for practice before the Patent Trial and Appeal Board (PTAB). The new rules will be effective May 2, 2016. Notable changes to PTAB practice are highlighted below, while the full text is available here.
Patent Owner’s Preliminary Response
Under the new rules, a patent owner can now submit testimonial evidence in a preliminary response. The USPTO notes that this change provides greater parity between the types of evidence that can be submitted in a petition and preliminary response. The rule is subject the caveat that any genuine issues of material fact created by the testimonial evidence should be resolved in favor of the petitioner for purposes of institution, thus ensuring that the petitioner will have an opportunity for cross-examination.
Claim Construction Standard for Expiring Patents
The USPTO has modified the claim construction standard for AIA post-grant proceedings with respect to patents that will expire prior to the issuance of a final written decision. The PTAB currently applies the broadest reasonable interpretation standard to all unexpired patents, but under the new rule, can apply the district court Phillips-type claim construction standard to patents that will expire during the proceeding, upon the request of either party. Note that the claim construction standard for inter partes review is currently under review at the Supreme Court in Cuozzo Speed Technologies v. Lee, No. 15-446 (cert. granted January 15, 2016).
Rule 11-type Certification
The new rules require practitioners to provide a certification similar to Rule 11 of the Federal Rules of Civil Procedure with all papers filed in a proceeding. The new rules also set forth procedures for imposing sanctions, both upon motion and on the PTAB’s initiative, for violations of this rule.
Word Count Limits on Major Briefings
With these new rules, the current page limits for major briefings are replaced with word limits.
After notice and comment, the USPTO has declined to adopt a proposed pilot program which would permit a single judge to make institution decisions. In addition to the changes above, the USPTO has indicated that the Office Trial Practice Guide will be amended to consider recent developments regarding motions to amend, additional discovery, real party-in-interest and privy issues, and confidential information.