The U.S. Patent and Trademark Office will be making a series of rule changes to America Invents Act reviews. Some will be effective immediately, others will be implemented in phases. The rule changes are a direct response to the public comments the USPTO received last year about how to improve the AIA review process. Most practitioners will welcome the changes, which Director Michelle Lee described in a blog post on the agency’s website on March 27, 2015. Specific topics for change, according to Director Lee, include:

1. Further modification to the motion to amend process;

2. Adjustments to the evidence that can be provided in a patent owner preliminary response;

3. Clarification of the claim construction standard as applied to expired patents;

4. Adjustments to the scope of additional discovery;

5. How to handle multiple proceedings involving the same patent;

6. Providing guidelines for the use of live testimony at oral hearings; and

7. Whether the parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation.

We discuss a few of these proposed changes below.