The USPTO issued the second round of proposed rule changes for practicing before the Patent Trial and Appeal Board (PTAB).  Proposed rule changes include:

  • Allow patent owners to include expert or other declarations with the preliminary response.  Supporting evidence will be viewed in the light most favorable to the petitioner, and the petitioner may also seek leave to file a reply.
  • Apply broadest reasonable interpretation (BRI) claim construction standard in all proceedings where the patent will expire after a final written decision and apply Phillips claim construction to patents that would expire before a final written decision.
  • Require seven days between exchange of exhibits and the oral hearing.
  • Require a word count (not a page limit) for briefing.  For example, the 60-page limit would be replaced with a 14,000 word limit.
  • Add a Rule 11-type certification for all papers filed, to allow the Board to sanction noncompliance.

The new preliminary response declarations and possible reply may prove to be the biggest change, as it may alter post-grant practice prior to institution.  The move to word count seems to be a small but wise decision, as it should reduce disputes over formatting and improve readability.  USPTO Director Michelle Lee discussed the proposed rules on her blog today.  If you have thoughts on these proposed rules, the USPTO is accepting comments until October 19, 2015.