Patent Board’s Proposed New Rules for PTAB Trials

August 25, 2015

The PTAB issues its second round of proposed rule changes.

The Patent Trial and Appeal Board (PTAB) just issued its second round of proposed rule changes to post-patent issuance review proceedings (Inter Partes Reviews, Post-Grant Reviews, and Covered Business Method reviews) conducted by the PTAB. These proposed rules follow the set of “quick fixes” to PTAB trial procedures that the United States Patent and Trademark Office (USPTO) implemented this past March.

The new proposed rules attempt to address issues and public comments concerning 1) the claim construction standard for PTAB trials, 2) testimonial evidence submitted with a patent owner's preliminary response, 3) Rule 11-type certifications for practitioners, and 4) word count limitations for major briefing.

Overview of Proposed Changes

Claim Construction Standard for Patents That “Will Expire” During Proceedings. The proposed rules alter (but only slightly) the USPTO’s longstanding practice of giving claims their broadest reasonable interpretation during examination and other post-issuance proceedings. They will permit the PTAB to use the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), but only for patents that will expire during proceedings and thus cannot be amended. The PTAB will continue to use the broadest reasonable interpretation standard for all other cases.

New Testimonial Evidence Submitted With a Patent Owner’s Preliminary Response. The proposed rules will allow patent owners to include new testimonial evidence (such as expert declaration testimony) with their preliminary response to a petition to institute a proceeding. If this proposed rule is implemented, it should help level the playing field for patent owners who, under the current rules, are not permitted to submit any rebuttal expert testimony with their preliminary response. The proposed rule, however, still ensures petitioners have a significant advantage, as it requires the PTAB to view disputed material facts in the light most favorable to the petitioner when deciding whether to institute proceedings.

Rule 11-Type Requirement. The proposed rules require practitioners to include a Rule 11-type certification with all filed papers with a provision for sanctions for noncompliance. This proposed rule change stands to give the USPTO more power to address attorney misconduct and abuse of process. This rule change would supplement an existing rule (37 C.F.R. § 42.12) that provides sanctions for “advancing a misleading or frivolous argument or request for relief.”

Word Count Limitations. The proposed rules would do away with page limits in favor of word count limitations for petitions, patent owner preliminary responses, patent owner responses, and petitioners’ replies.

In the Federal Register notice disclosing the proposed rules, 80 FR 50719 (Aug. 20, 2015), the USPTO noted that it will also “amend its Office Patent Trial Practice Guide to reflect developments in practice before the Office concerning how the Office handles additional discovery, live testimony, and confidential information.” Id. at 50720.

In an August 19 blog post, USPTO Director Michelle Lee encouraged readers to file comments to the proposed rules and noted that the USPTO will be conducting road shows where they will be discussing and accepting feedback on the rule proposals and improvements to PTAB proceedings. The road shows, titled “Enhancing Patent Quality and Conducting AIA Trials,” are being held the last week of August: August 24 in Santa Clara, California, August 26 in Dallas, Texas, and August 28 at USPTO headquarters in Alexandria, Virginia.

The deadline to file comments regarding the proposed rules is October 19, 2015.


If you have any questions or would like more information on the issues discussed in this LawFlash, please contact any of the following Morgan Lewis lawyers:

Silicon Valley
Dion M. Bregman
Ahren C. Hsu-Hoffman