USPTO Director Announces "Quick-Fix" and Anticipated Changes to PTAB Practice

USPTO SealOn Friday, March 27, U.S. Patent and Trademark Office Director Michelle Lee issued a statement on the PTO Blog indicating several "quick-fix" and proposed rule changes.  The "quick-fix" rules package will apply to all newly filed petitions before the Board, and will be implemented in pending cases by APJs through scheduling orders effective immediately.  The second proposed-rules package will likely be released this summer and the community will be given an opportunity to provide feedback before the rules are finalized.  These new rules packages stem from 37 written comments that the Office received when it requested feedback at the end of last year.  See "Deputy Directory Lee Announces the Request for Written Comments to Help Improve PTAB Proceedings"; "PTAB Update -- A Review of the First Round of Comments (Part 1)"; "PTAB Update -- A Review of the First Round of Comments -- Part 2".  In fact, the authors of this post, along with Alison Baldwin and Lisa Schoedel, submitted one of these comments advocating that the Board adopt the same standard for construing claim terms as used by federal courts as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).  See "PTAB Update -- Is "Broadest Reasonable Interpretation" the Appropriate Standard?"

According to Director Lee, immediate changes include nearly doubling the number of pages for a motion to amend to up to 25 pages, along with the addition of a claims appendix.  Opposition briefing and reply briefing will get a commensurate amount of additional pages.  Judges will begin implementing these changes through scheduling orders effective immediately.

The increase in the number of pages allowed for a motion to amend is up from the current 15 pages, which must include the listing of the claims (unless indicated otherwise in a scheduling order).  As a result, we are likely to see an increase in the number of motions being granted.  Of course, it is hard to imagine any less (considering only two sets of motions have been granted in the past 2 ½ years).  The patent owner was already at a huge disadvantage because of the high hurdle required to establish it was entitled to amend a claim, but the 15-page limit made it practically impossible.  It is really no surprise that so few motions have been granted.

The other "quick fix" rule change will also be significant, especially as it relates to a petitioner's reply brief responding to a patent owner response.  The current page limit is 15 pages, which puts the petitioner at a disadvantage in responding to the assertions made by the patent owner in response to the petition (which can be up to 60 pages for an IPR petition).  Even though the petitioner initially received a commensurate number of pages when it filed its original petition, it is very difficult to anticipate every argument that the Patent Owner will raise.  This is especially true with regard to secondary indicia of non-obviousness, for which the patent owner bears the burden of establishing.  The page increase will relieve some of the pressure on the petitioner to anticipate every argument in the petition.

The upcoming anticipated rule changes (second rule changes) include:

• Modifying 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.

This last noted change is somewhat disheartening, because it suggests that the Patent Office is not entertaining the possibility of changing the claim construction standard for unexpired patents.  The final remaining hope of a "plain and ordinary meaning" standard may rest with Congress, which is a distinct possibility, considering such a standard has been proposed in almost every piece of legislation.

The other rule changes under consideration mentioned by Director Lee include:

• 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;

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

• For motions to amend, emphasizing that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be "entered");

• For amendments 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;

• Changes to the Trial Practice Guide to clarify usage of live testimony and to emphasize the importance of real-party-in-interest discovery; and

• A single-judge pilot program where the single judge would make the decision on whether to institute a trial.

Director Lee's full blog posting is available here.

For those interested in following the events at the PTAB, the authors are proud to announce the launch 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.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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