Why it matters: On March 31, 2016, the U.S. Patent and Trademark Office (PTO) announced that previously-announced amendments to the Patent Trial and Appeal Board’s (PTAB) rules of practice had been finalized and would go into effect on May 2, 2016. On April 4, 2016, the PTO also published for comment proposed amendments to the Trademark Trial and Appeal Board (TTAB) rules of practice. Both sets of amendments are part of the PTO’s ongoing efforts to improve the rules covering trial practice before the respective two tribunals. Read on for a recap of the new PTAB and proposed TTAB rules of practice.
Detailed discussion: Following is a recap of the PTO’s new PTAB and proposed TTAB rules of practice.
The new PTAB rules of practice went into effect on May 2, 2016, taking into account the substantial comments received during the comment period following initial publication on August 20, 2015 (we reviewed the proposed amendments in our December 2015 newsletter). Deputy Director Slifer commented that “[a]s hard as we worked on our initial roll-out of these proceedings, we never assumed that our rules would be perfect at the outset. We anticipated having to revisit some of the guidelines and making refinements along the way.”
The new rules:
- Allow patent owners to include, with their opposition to a petition to institute a proceeding, any relevant testimonial evidence (this change addressed concerns that patent owners were disadvantaged by previous rules that limited the evidence that could be presented with their preliminary response to the petition);
- Add a Rule 11-type “duty of candor” certification for papers filed in a proceeding;
- Clarify that the PTAB will use the plain and ordinary meaning claim construction standard used by district courts for patents that will expire during a proceeding and therefore, cannot be amended, while confirming the use of broadest reasonable interpretation (BRI) for all other patent matters*; and
- Replace the current page limit with a word count limit for major briefings.
* This new rule may change depending on the outcome of the Supreme Court’s pending decision in Cuozzo Speed Technologies v. Lee. See our article covering the Cuozzo oral argument in this issue.
Deputy Director Slifer said that the PTAB’s Patent Trial Practice Guide will be amended to reflect these new rules of practice. Deputy Director Slifer also indicated that the PTO would abandon its proposal to allow a single judge to institute post-grant review trials due to the overwhelmingly negative response.
On April 4, 2016, the PTO published proposed amendments to the TTAB rules of practice in the Federal Register and is requesting practitioner comments through June 3, 2016. Notably, the proposed amendments:
- require that all filings in TTAB proceedings be made electronically;
- shift the responsibility of serving notices of opposition and petitions for cancellation to the TTAB;
- require that service of papers between parties be by email with the consequent deletion of the 5-days-for-mailing extended response period;
- impose a limitation on the number of allowable document and admission requests (to 75 each);
- require that all discovery be completed by the close of the discovery period; and
- provide the option to submit testimony by declaration or affidavit, subject to cross-examination.
The amendments are intended to “reduce the burden on the parties, to conform the rules to current practice, to update references that have changed, to reflect technologic changes, …to ensure the usage of standard, current terminology [and to] further strategic objectives of the Office to increase the end-to-end electronic processing.”
See here to read the final “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board” published in the Federal Register on 4/1/16 and here to read the Director’s Forum blog post entitled “PTAB Issues Final Rules for Improved Proceedings.”
See here to read the text of the proposed TTAB rule amendments entitled “Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice” published in the Federal Register on 4/4/16.