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IP Alert: USPTO Announces New PTAB Trial Rules in AIA Proceedings

April 1, 2016

Yesterday, the U.S. Patent and Trademark Office (USPTO) announced a set of new final rules implementing provisions of the American Invents Act relating to practice before the Patent Trial and Appeal Board (PTAB). The rules, published in a 71-page Federal Register notice today, will accomplish the following:
  • Allow patent owners to include any relevant testimonial evidence with their opposition to a petition to institute a proceeding, addressing concerns that patent owners are disadvantaged by previous rules that limited the evidence that could be presented with their preliminary response to the petition;
  • Add a Rule 11-type procedure for papers filed in a proceeding, with the possibility of sanctions for improper conduct before the PTAB;
  • Clarify that the PTAB will use the claim construction standard used by district courts for patents that will expire during a proceeding and therefore cannot be amended, while confirming the use of the broadest reasonable interpretation standard for all other patents (although this issue is presently under consideration before the Supreme Court in Cuozzo Speed Technologies, LLC v. Lee; as previously reported here); and
  • Replace the current page limit with a word count limit for major briefings.
The USPTO also said that it will amend its Office Patent Trial Practice Guide to reflect these rule changes as well as to reflect certain clarifications to the discovery and trial processes.

In addition, the USPTO stated that it has abandoned its plans to proceed with a pilot program for post-grant administrative trials by a single judge as opposed to a three-judge panel. 

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