The U.S. Patent and Trademark Office (USPTO) has published in the Federal Register a final rule to amend the existing rules of practice for inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings, that implemented provisions of the Leahy-Smith America Invents Act. Last year, on May 19, 2015, the USPTO published a final rule addressing certain ministerial changes, including an allowance for 10 additional pages for a patent owner’s motion to amend and providing 10 additional pages for a petitioner’s reply brief.

The new rules make only a few changes to the existing rules.

  • The patent owner is allowed to submit new testimonial evidence in support of the preliminary response. This change creates some new strategic considerations for the patent owner, as it may not always be advantageous to submit an expert declaration with the preliminary response. It may be more strategic to wait and see the institution decision by the Patent Trial and Appeal Board (PTAB) before the patent owner locks in its witness’ testimonies. This allows the patent owner to craft their post-institution case based on the PTAB’s concerns and preserves some new evidence for the post-institution trial. If the same three judges are looking at the exact same evidence and arguments pre- and post-institution, it is difficult to see what will change their minds in the trial phase regarding the patentability of the claims.

The strategy to submit new testimonial evidence with a preliminary response is made even more complicated by a new provision that provides that “a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner” (37 CFR Section 42.108). Most testimonial evidence submitted by a patent owner would create a material issue of fact. As a result, these factual disputes will be resolved against the patent owner for purposes of the institution decision.

  • The USPTO maintains the broadest reasonable interpretation claim construction standard, unless the patent will expire before the final written decision is issued. The final rule provides that a party may request, by motion, a “district court-type claim construction approach” where the patent at issue will expire within 18 months of the entry of the Notice of Filing Date (37 CFR Section 42.300). The motion must be made within 30 days from the filing of the petition. The PTAB apparently will resolve the claim construction standard on a case-by-case basis for patents that will expire during the course of the post-grant proceeding.
  • The duty of candor in PTAB proceedings has been reinforced and provides that the signature on any document filed with the office is a representation, among others, that the action is not being conducted “for any improper purpose, such as to harass, cause unnecessary delay, or needlessly increase the cost of the proceeding” (37 CFR Section 42.11, 11.18(b)(2)). It is unclear what an “improper purpose” encompasses. The proposed rule also provides new procedural rules for sanction motions, including a requirement to serve the accused party with a copy of the motion 21 days prior to seeking authorization to file a motion for sanctions. This provision gives the accused party an opportunity to correct the challenged error.
    • The page limits have been changed to maximum word counts for the petition, patent owner preliminary response and petitioner’s reply brief; the PTAB retains page limits for all other briefings. For example a petition for inter partes review is limited to 14,000 words. This will allow claim charts to now contain attorney argument, since such argument in singe-spaced claim charts will no longer be construed as a means to get around the page limits.

The rules became effective on May 2, 2016