On May 19, 2015, the U.S. Patent and Trademark Office published its first "Final Rules" package of amendments to the Rule of Practice before the Patent Trial and Appeal Board ("PTAB"). Keeping with Director Lee's announcement on March 27, 2015 (see "USPTO Director Announces "Quick-Fix" and Anticipated Changes to PTAB Practice"), this set of rules was described as including more ministerial changes. The Office promised a second set of rules that will address more "involved" changes to the rules. These rules changes stemmed from a "nationwide listening tour" last year, which culminated in a request last June for public feedback about the AIA post-grant proceedings. This request was in the form of seventeen questions. According to the current Final Rules, thirty-seven comments were submitted from individuals, corporations, bar associations, and law firms. The Office promised to address all of these comments that do not involve changes to page limitations in the second rule package later this year. Please find below the changes made in the current rules package:
Patent Owner's Motion to Amend
In perhaps the most significant change of the current rules package, the Patent Office is increasing the page limit for Motions to Amend by ten pages (to a total of twenty-five pages), and removing the necessity of including the claim listing within this limit. Instead, the claim listing can now be provided in an appendix. In order to keep things equivalent, the Office also increased by a commensurate amount the number of pages for an opposition to the motion to amend. The Office had received a wide range of suggestions to deal with this issue, including creating a flexible page limit based on the number of substitute claims, or allowing the patent owner to allocate any unused pages from the Patent Owner's Response. However, these suggestions would have been difficult to administer.
Petitioner's Reply
This Office is also increasing the page limit for the Petitioner's reply brief from fifteen pages to twenty five. The problem was that fifteen page was believed to not be commensurate with the Patent Owner's response. This was especially problematic for the petitioner when the Patent Owner raised new issues in the response. One suggestion was to increase the number of pages by a flexible amount, to be set by the amount of space addressing new issues. However, this too would have been difficult to administer.
Required Font
The new rules will require the use of 14-point Times New Roman proportional font, with normal spacing. Originally, the Office only required a proportional or monospaced font, 14-point or larger (with the additional requirement that monospaced font not contain more than ten characters per inch. However, because parties have used overly narrow fonts that met the letter of the rule, but proved difficult to read, the Board is now going to require uniformity in font type to ensure readability.
Counsel
The Office is clarifying that more than one back-up counsel can be designated. This will be accomplished with an amendment to 37 C.F.R. § 42.10(a), changing "a" to "at least one."
Fees
The Office is requiring that fees due under 37 C.F.R. § 42.15 be based on not only the number challenged claims, but also on the claims from which they depend (unless already included). The reason given was that, in order to understand the scope of a dependent claim, it is necessary to also construe the claims from which it depends.
Oppositions and Replies and Page Limits for Petitions, Motions, Oppositions, and Replies
The Office is clarifying that a statement of material fact in an opposition or reply is optional. 37 C.F.R. §§ 42.23 and 42.24 are amended to make this clear.
Discovery
The Office is also clarifying that routine discovery includes only the cross-examination of affidavit testimony. Nothing more.
Taking Testimony
37 C.F.R. § 42.53(c)(2) is being amended to clarify that uncompelled direct testimony must be in the form of an affidavit.
Motions in Limine
The rules do not provide for motions in limine, but the term was include at 37 C.F.R. § 42.64. This reference is being deleted.
Oppositions
37 C.F.R. § 42.64(b)(1) is being amended to require the filing of objections to the admissibility of evidence, rather than just service as originally required. The problem stemmed from the fact that motions to exclude evidence require identification in the record when the objection was first made. However, when they were only served and not filed, the objections did not become part of the record. This amendment solves that problem.
Decision on Petition or Motion
The Office is clarifying that a party may only file one request for rehearing as a matter of right.
The Office also made a couple of changes to the transitional program for covered business method patent review. First, it was clarified that the pendency of the review can be extended. Second, the Office clarified that a petitioner is barred from challenging the validity of patent if it already filed a civil action challenging the validity of a claim.
As mentioned, there will be a second rules package that will hopefully come out later this year. According to Director Lee's announcement of about two months ago, we can expect to see in this second package, modifications to the motion to amend process; adjustments to the evidence a patent owner can provide in a preliminary response; and clarification of the claim construction standard as applied to expired patents in AIA proceedings. We will, of course, report the new rules package once they are published.
And finally, we do wish to acknowledge that on the same day as this rules package, PTAB Chief Judge James Smith announced that he will be stepping down from that position later this year (according to a report from Law360). Judge Smith was appointed to the position in 2011, when it was known as the Board of Patent Appeals and Interferences. In addition, Judge Smith has been the only Chief Judge of the PTAB, which was created by the America Invents Act ("AIA") in 2012. Not only was Judge Smith required to oversee the implementation of the new post-grant proceedings introduced by the AIA, but he was responsible for handling the backlog of appeals in other cases, such as prosecution appeals and reexaminations. Nevertheless, Judge Smith in generally thought to have performed admirably in his tenure at that position. We wish Judge Smith success in his future endeavors, and thank him for a job well done over the past four years.
For those interested in these topics, and would like to get (or share) more recent happening at the PTAB, we would like to remind everyone of the PTAB TRIALS group on LinkedIn, which provides up-to-date information on IPR, PGR and CBM Info. That group will continue to cover the roll-out of the new AIA post-issuance proceeding rule packages. And, of course, we will continue to cover any significant updates here on Patent Docs.
