USPTO Releases "Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board"

Summary provided by MaryAnne Armstrong, Ph.D.

On April 1, 2016, the UPSTO released “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board.” The rule amendments make several changes to rules governing post grant proceedings before the PTAB.

  1. One of the “hot” issues in post grant proceedings is the standard of review used by the PTAB in interpreting claims. Currently the USPTO uses a “Broadest Reasonable Interpretation” (BRI) standard. The use of the BRI standard is currently on appeal to the Supreme Court in Cuozzo Speed Technologies v. Lee. However, under the rule changes either party may file a motion requesting that a “district court-type claim construction” be used for any patent, which will expire within 18 months from the institution date. The motion must be filed within 30 days of the petition filing date and must certify that the involved patent will expire within 18 months of the Notice of Filing Date Accorded to Petition. The comments section of the rule amendments explains that the reason that patents, which will expire within 18 months, may be afforded a district court claim interpretation is because of the inability of a patent to be amended after expiration.
  2. The rule changes also make changes to the rules governing the Patent Owner’s Preliminary Response. Under the rule changes the patent owner may include new testimonial evidence with the Patent Owner’s Preliminary Response. However, any genuine issue of material fact created by the new testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute the proceeding. The rules also provided a possibility of the petitioner to file a response to the patent owner's preliminary response with new evidence, but only upon a showing of good cause.
  3. The third most significant change with the rule changes is a provision for sanctions for violation of the duty of candor to the USPTO under 37 §42.11 during a post grant proceeding. However, a sanctions motion cannot be filed without authorization of the Board.
  4. The amendments to the rules also provide for some changes in the formalities of the proceedings, including an amendment requiring that exhibits be exchanged by the parties at least seven days (changed from five days) prior to the oral hearing. In addition, the changes implement a word count rather than a page count limitation for petitions, patent owner preliminary responses, patent owner responses and petitioner’s replies.
    The comments issued with the final rules also contemplated possible changes to the rules governing the motions to amend the claims during a post grant proceeding. However, while the UPSTO has left open this issue for further consideration and has indicated that the “Office will endeavor to provide guidance through its adjudicatory process”, no changes to the rules regarding motions to amend have been made at this time.