In a blog post today, Michelle Lee (Director of the U.S. Patent and Trademark Office) announced proposed rule changes governing trial proceedings before the Patent Trial and Appeal Board (PTAB) under the America Invents Act. These anticipated additional proposed rules follow the Patent Office’s Federal Register publication of so-called “quick fix” rules earlier this year. Those “quick fixes,” inter alia, increased the page limitation for a Petitioner’s Reply Brief (from 15 to 25 pages) and modified rules governing a Patent Owner’s motion to amend. Today’s additional, proposed rules also follow myriad rulings from both the PTAB and the U.S. Court of Appeals concerning trial proceedings and procedures. Our previous reporting on those rulings includes coverage of In re Cuozzo Speed Technologies, LLC (here and here), in which the Federal Circuit endorsed the PTAB’s use and application of the “broadest reasonable interpretation” standard for claim constructions.

The proposed rules may be found here and will be formally published in the Federal Register on Aug. 20, 2015. As announced by the Patent Office, thisFederal Register Notice:

  • “Proposes to allow patent owners to include, with their opposition to a petition to institute a proceeding, new testimonial evidence such as expert declaration.”
  • “Proposes a new requirement on practitioners before the PTAB, akin to the Rule 11 requirements in federal courts, to give the USPTO a more robust means with which to police misconduct.”
  • “Proposes to clarify that the PTAB will use the claim construction standard used by district courts for patents that will expire during proceedings and therefore cannot be amended, while confirming the use of broadest reasonable interpretation (BRI) for all other cases.”
  • “Notes the PTAB’s development of motions-to-amend practice through its own body of decisions, including a recent decision that clarified what prior art a patent owner must address to meet its burden of proof.”
  • And, “addresses comments made about requests for additional discovery, live testimony, and confidential information.”

The Patent Office has requested that comments to the proposed rules be submitted on or before Oct. 19, 2015. Any changes based on the proposed rules are anticipated to take effect following publication of the final rules in theFederal Register.

Today’s blog post also notes updated PTAB statistics, public road shows, and other opportunities for public input concerning proposed rulemaking and trial proceedings before the PTAB.