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Quick Fixes and Proposed Rulemaking for PTAB Trial Rules Announced by Director Lee

Under Secretary of Commerce for Intellectual Property and USPTO Director, Michelle Lee, announced on Friday that a series of actual and proposed rulemakings aimed at improving post-grant proceedings before the PTAB will be forthcoming—some effective immediately and others rolling out over the summer and beyond.

According to Lee, at least some of the changes have been spurred by comments received from industry, academic and legal commentators in response to a notice of proposed rulemaking (“Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board”) published by the Patent Office in the Federal Register in June 2014.

Three-Phase Plan:  Lee explained that the Office is currently planning to implement some of its changes to the post-grant proceeding rules in three stages.

1. The Spring “Quick-Fix” Package—this spring the Office plans to issue a first rule package of "quick fixes"—changes of simple scope aimed to immediately improve post-grant proceedings. Included in these “quick fixes” are increases to the page limits for motions to amend and petitioner replies set forth in 37 C.F.R. § 42.24:

  • Motion to Amend: 15 pages ⇒ 25 pages, plus a claims appendix
  • Opposition to Motion to Amend: 15 pages ⇒ 25 pages
  • Reply to Opposition to Motion to Amend: 5 pages ⇒ 15 pages
  • Petitioner’s Reply to Patent Owner’s Response: 15 pages ⇒ 25 pages.

Lee indicated that PTAB judges will start implementing these new page limit rules through scheduling orders effective immediately, i.e., as of last Friday, March 27.

2. The Summer “Proposals” Package—over the summer the Office will issue a second proposed-rule package containing more substantive changes to the PTAB rules, including:

  • modifications to the motion to amend process;
  • adjustments to the evidence allowed in a patent owner preliminary response; and
  • clarification of the claim construction standard as applied to expired patents in AIA proceedings.

According to Lee, the Patent Office is also “considering” changes that relate to:

  • adjusting the scope of additional discovery;
  • handling multiple proceedings involving the same patent;
  • using live testimony at oral hearings;
  • requiring parties to certify their filings similar to a Fed. R. Civ. P. 11 certification; and
  • limiting the burden on patent owners with respect to amending claims by emphasizing that—
    • a motion for a substitutionary amendment may always come before the Board for consideration (i.e., be “entered”); and
    • patent owners need not make a representation as to the patentability of any narrowed amended claim(s) beyond the art of record before the Office in order to obtain issuance (“patenting”) of such amended claim(s).

Lee noted, however, that the duty of candor and good faith of course still requires patent owners to make of record any known prior art that is material to patentability.

3. Revisions to the Trial Practice Guide—the Office also plans to modify the Trial Practice Guide to clarify trial operations, including addressing in greater detail the subject of using live testimony at a hearing. Director Lee also noted that the Trial Practice Guide will be updated to recognize the importance of allowing patent owners ample discovery for establishing the real-party-in-interest (RPI) of the petitioner as it may relate to determinations of standing and as to possible later estoppel consequences.

Single-Judge Pilot Program for Institution:  Lastly, Lee announced that the Office is considering a pilot program for trial institution where a single judge will decide whether to institute a trial.  This initiative is in response to concerns that judges participating in the institution decision may not be completely objective in the trial phase.  Under the program, two additional judges will be added to the panel with the first judge only when and if a trial is instituted.  After running this pilot for a select number of cases, the Office will study the results to determine what approach to follow in the future.

Lee noted in conclusion that the Office intends to continue to iteratively revise the PTAB trial rules based on ongoing input from practitioners and the public at large.

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Brad M. Scheller is an experienced patent litigator and strategic counselor to start-up ventures and established businesses in the mechanical and electrical arts, with a focus in EV and battery technologies and advising clients on patent portfolio growth, management and enforcement. He represents clients before the United States Patent and Trademark Office and as lead counsel in federal district court and appellate litigation across the country.