In April and May of 2014, the USPTO conducted a nationwide “listening tour” seeking public feedback regarding trial proceedings under the America Invents Act. On May 19, 2015, in response to that feedback, the USPTO published a package of amendments to the rules of practice in post-grant proceedings, which include Inter Partes Review (IPR), Post-Grant Review (PGR), and review of Covered Business Methods (CBM).
The amendments, which go into effect immediately, are characterized by the Patent Office as “ministerial.” Some of the more noteworthy amendments include:
- Motion to amend: Ten additional pages and a claims appendix allowed in Patent Owner’s Motion; ten additional pages allowed for Petitioner’ opposition; and seven additional pages allowed for Patent Owner’s reply brief.
- Petitioner’s reply: Ten additional pages allowed in Petitioner’s reply to Patent Owner’s response to Petition.
- Evidentiary objections: No motions in limine are permitted; evidentiary objections must be filed.
- Discovery: Routine discovery contemplates only cross-examination of affidavit testimony prepared for the proceeding; uncompelled direct testimony must be in the form of an affidavit (not a deposition).
- Form of Briefs: Statement of material facts is optional; Times New Roman font must be used.
- CBM: Reviews may be extended in the case of joinder; no CBM petition may be filed if Petitioner (or real party-in-interest) file a civil action challenging the validity of a patent claim.
- Parties can name more than one back-up counsel.
- Only a single request for rehearing may be filed as of right.
The USPTO explained that this “ministerial” amendment package will be followed by a second rule package to address “more involved changes to the rules and the Office Patent Trial Practice Guide.” The amendments and accompanying explanations are available in the Federal Register (80 FR 28561-28566, May 19, 2015).