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IP Updates

PTAB’S “Quick-Fixes” for AIA Rules Are to Be Implemented Immediately

March 27, 2015

IP Updates

PTAB’S “Quick-Fixes” for AIA Rules Are to Be Implemented Immediately

March 27, 2015

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In a blog post on the USPTO’s website, Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee, announced that the office will make a number of rule changes impacting post-grant proceedings.

“This spring we plan to issue a first rule package containing what we call ‘quick fixes’—changes of simple scope that will immediately improve the trial proceedings.  Later this summer, we will issue a second proposed-rule package containing more involved changes to our Patent Trial and Appeal Board Trial Rules that govern the conduct of the AIA trial proceedings. We also plan to modify our Trial Practice Guide that provides guidance to the public concerning various aspects of PTAB practices in AIA trial proceedings. The Trial Practice Guide advises the public on the general framework of the rules, including the structure and times for taking action in AIA trial proceedings. These modifications will clarify our trial operations and by implementing the roll-out in stages, we aim to bring improvements to our proceedings as quickly as possible.

As to our first ‘quick fix’ rule package, I wish to highlight some of the improvements you can expect to see. Many of you advised us that fifteen pages for a motion to amend that includes a claim listing is not sufficient to explain adequately why the amended claims are patentable. Similarly, others noted that fifteen pages for a petitioner’s reply brief is not a commensurate number of pages to respond to a patent owner’s response. We have heard you, and we agree. One of our quick-fix changes will nearly double the number of pages for a motion to amend, granting up to twenty-five pages for the motion along with the addition of a claims appendix (with a commensurate amount of additional pages for the opposition and reply briefing). Another change will nearly double the number of pages for a petitioner’s reply brief, granting up to twenty-five pages. Notably, even before these two changes appear in the first rule package, judges will begin implementing them through scheduling orders effective immediately.”

A second rule package, scheduled for release this summer, is also discussed.

“As to our second rule package of more involved changes, we are considering proposing a number of other revisions to rules including: further modifications to the motion to amend process; adjustments to the evidence that can be provided in the patent owner preliminary response; and clarification of the claim construction standard as applied to expired patents in AIA proceedings. We also are considering several other changes, including adjustments to the scope of additional discovery, how to handle multiple proceedings before the Office involving the same patent, use of live testimony at oral hearings, and whether the parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation.

Additionally, regarding motions to amend, we are contemplating proposed changes to emphasize that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be ‘entered’), and for the amendment to result in the issuance (‘patenting’) of amended claims, a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office. Of course, the duty of candor and good faith requires the patent owner to make of record any additional prior art material to patentability known by the patent owner. These contemplated changes would be intended to more noticeably limit the burden on the patent owner, even though the patent owner is the party moving for the change in the patent.

As with the revisions we are making via the first rule package, the changes being considered in our second rule package are the direct results of your feedback. And because we plan to issue the changes in the second rule package in the form of a proposed rule, you will have an additional opportunity to give your feedback before we finalize them.”

The full blog post containing additional information can be found here, and additional coverage by Law360 here.

For more information, contact a Fish & Richardson attorney.

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