The U.S. Patent and Trademark Office (“USPTO”) has finalized a set of new America Invents Act review rules or practice, which will take effect on May 1, 2016. The new rules for the most part adopt rules the USPTO had proposed in August 2015 and address comments received, and would not affect AIA petitions (IPRs, PGRs, CBMs) which have already been instituted.
The principal changes in the new rules are as follows:

  1. Patent owners will be allowed to include expert declarations and other testimonial evidence in their response to an AIA review petition. However, if the patent owner’s testimonial evidence creates a “genuine issue of material fact,” it will be resolved against the patent owner for the purposes of institution (but not after institution), and the petitioner will have an opportunity to cross-examine the declarant during the trial.
  2. The new rules impose a requirement on practitioners before the Patent Trial and Appeal Board (“PTAB”) akin to Rule 11 of the Federal Rules of Civil Procedure, applicable in federal district court, under which attorneys can be sanctioned for not doing an adequate pre-filing investigation.
  3. Under the new rules the PTAB will continue to use the so-called “broadest reasonable interpretation” standard to construe the claims of patents in AIA reviews, except in cases where the patent at issue will expire during the review and cannot be amended. In such cases, the PTAB will use the same claim construction standard used in district courts. Either party to an AIA review can request that PTAB use that standard if the patent will expire within 18 months of the petition. The PTAB will then hold a conference call to discuss how to resolve the motion.
  4. The new rules also establish word counts, rather than page limits, for the petition, patent owner preliminary response, patent owner response, and petitioner’s reply brief.

The Federal Register notice containing the complete set of new rules is available here, starting April 1, 2016.