On August 20th, the U.S. Patent and Trademark Office published proposed rules that would amend the consolidated set of rules currently governing Inter Partes Reviews, Post-Grant Reviews, Covered Business Method Reviews, and Derivation proceedings before the Office. Here are the top seven things patent practitioners and their clients should know about the proposed rules.

1) Testimonial Evidence in Support of Patent Owner’s Preliminary Response (“POPR”) -

The Office proposed allowing a patent owner to submit new testimonial evidence with its preliminary response. Proposed Rules § 42.107 and § 42.207. This evidence would most likely come in the form of one or more expert declarations supporting the POPR. The Office also proposed amending the rules to provide that any factual dispute that is material to the institution decision will be resolved in favor of the petitioner solely for purposes of making a determination on whether to institute trial. Proposed Rules at 25. The Office stated that such a resolution would preserve the petitioner’s right to challenge statements made by the patent owner’s declarant. Id.