As foretold, the United States Patent and Trademark Office (“USPTO”) published its second set of proposed changes to Office Patent Trial Practice Guide in the Federal Register on August 20, 2015. These proposed changes intend to improve the procedures implemented for patent review proceedings established by the America Invents Act (“AIA”) of September 16, 2012. The AIA proceedings include inter partes review (“IPR”), the transitional program covered business method patents (“CMB”), post-grant review (“PGR”), and derivation proceedings.

The USPTO garnered public commentary on the AIA’s patent review proceedings during its 2014 “listening tour.” The USPTO issued its first set of proposed changes in May 2015. The second set of proposed changes are more substantial and address, among other things, procedural aspects of the patent review process such: (1) evidentiary rules; (2) the parties’ duties of candor; (3)claim construction; (4) claim charts; and (5) a patentee’s motion to amend claims. The public has until October 19, 2015 to voice any concerns or comments regarding the proposed changes.

The USPTO’s most substantive proposal relates to the evidentiary rules of patent review proceedings. The proposal allows patentees to file testimonial evidence, such as expert declarations, in their preliminary response to a petitioner’s challenge to the validity of their patent. Currently, the petitioner is allowed to use testimonial evidence to convince the Patent Trial and Appeal Board (“PTAB”) to institute a review of a patent’s validity, but the patentee is limited to legal argument in their response. This proposed amendment seeks to even the playing field by providing the patentee with an opportunity to introduce additional rebuttal evidence with which to oppose a petition. However, because PTAB is required to resolve any issue of material fact in favor of the petitioner at the preliminary stage , even if a patentee’s testimonial evidence creates a material issue of fact, the issue will be resolved in favor of the petitioner.

The USPTO’s proposed changes also enhance the parties duty of candor under 37 C.F.R. 42.11. This proposed change seeks to prevent misuse of AIA proceedings and provides PTAB a more “robust” means to address misconduct and inadequate pre-filing investigations. The proposed change requires that parties certify that any papers filed with the USPTO are not presented for any improper purpose, are warranted by existing law, contain non-frivolous arguments, and have evidentiary support. If parties do not comply with this certification, the Board will have the discretion to impose a variety of sanctions.

The proposed rules resolve controversy regarding claim construction during PTAB proceedings. The proposed changes reaffirm the PTAB’s use of the broadest reasonable interpretation, not the Phillips standard used by district courts, to construe claims. In February 2015, the Federal Circuit affirmed the USPTO’s rulemaking authority to use the broadest reasonable interpretation to construe claims. See In re Cuozzo Speed Techs., LLC.

The proposed rules address ambiguity in party claim charts. Currently, parties are prohibited from including validity or invalidity arguments in their claim charts. Often, this creates ambiguity as to whether the party’s claim chart contains proper information or disguised argument. The proposed changes would allow argument in claim charts, abolish page limitations for certain filings, and, instead, impose word limitations to limit argument in those charts.

Further, the proposed rules clarify a patentee’s right to amend claims during patent review proceedings. Specifically, the patentee bears the initial burden of showing that the new claims are narrower than original claims, and are patentably distinct over the prior art of record (and the prior art that is known to the patentee). This includes material prior art from: (a) the patent’s prosecution history; (2) the current proceeding; and (3) any other proceeding before the USPTO. Then, once the patentee establishes a prima facie case of validity, the burden shifts to the patent challenger to show that the patent is invalid.

The USPTO will eventually set forth a third round of proposed changes which will address, among other things, the PTAB’s management of its operations and privilege during patent review proceedings.