On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) published a proposal to amend the existing rules of practice for inter partes review (IPR), post-grant review (PGR), the transitional program for covered business method patents (CBM) and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act (AIA). The proposed rule seeks public comment on the proposed changes, and the USPTO will issue a final rule implementing these changes—or some version of them—at a later date. The proposed rule also states that the USPTO intends to later amend its Office Patent Trial Practice Guide concerning how the Office handles additional discovery, live testimony and confidential information. 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. IP Update, Vol. 18, No. 6.
The new proposed rule changes envision only a few changes to the existing rules. The major changes are:
- Allows the patent owner 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 (the Board) before the patent owner locks in its witness' testimony.
- The PTAB will maintain the broadest reasonable interpretation claim construction standard, unless the patent will expire before the final written decision is issued. The proposed rule also clarifies the claim construction standard for a patent that will expire during the course of a proceeding and, thus, cannot be amended.
- Expressly provides that a petitioner may seek leave to file a reply to the patent owner preliminary response and that material facts that are disputed will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a proceeding.
- Reinforces the duty of candor in PTAB proceedings 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." This is a catch-all provision that could be used by the PTAB in a variety of contexts. The proposed rule also provides new procedural rules for sanction motions, including allowing the affected party to first correct the challenged document.
- Changes many of the page limits to word counts. For example a petition for inter partes review would be limited to 14,000 words.
- Demonstrative exhibits must be served at least seven business days before oral argument and filed no later than the time of the oral argument.
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