Today's Federal Register includes a notice that the Patent Office updated its August 2012 Trial Practice Guide. The Federal Circuit recently noted that the Practice Guide "is a thoughtful and useful resource to which individual Board members and the public might turn for guidance," but "is not binding on Board panel members." Application in Internet Time v. RPX Corp., Nos. 2017-1698, -1699, -1701, Slip Op. at 14 n.2 (Fed. Cir. July 9, 2018). The update revises six sections of the guide, including sections focused on the presentation of expert testimony, the Board's considerations in instituting review, and briefing concerning evidentiary issues and claim amendments. The update also includes a sample scheduling order reflecting the most substantive change: replacement of observations on cross-examination with sur-replies, offering the patentees the last word on patentability. For expediency, the Patent Office "has chosen to issue updates to the Practice Guide on a section-by-section, rolling basis, rather than a single, omnibus update addressing all aspects of the current Practice Guide."
Last week, the Patent Office's Director notified the Patent Public Advisory Committee (PPAC) of the Office's intent to set or adjust patent related fees and submitted a preliminary patent fee proposal with supporting materials," accessible at this link. Among the fee adjustments are 25% increases to the AIA trial petition fees to account for the Office's "significant additional work" the Supreme Court's decision in SAS Institute Inc. v. Iancu (discussed here) imposed. The Director also proposed new annual fees registered patent practitioners would have to pay to practice before the Patent Office, and fees for pro hac vice admission in AIA trials. The Office anticipates implementing the new fees and fee adjustments no sooner than January 2021. In advance, and according to a recent Federal Register notice, the Office will hold public meetings, the first of which is September 6, 2018, and invite written comments by September 13, 2018.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
