August 20, 2015
By Aaron J. Capron; Joshua L. Goldberg; Timothy P. McAnulty; James D. Stein
On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) released a proposed rule package in response to public feedback, making what it classifies as “more involved” changes to the rules governing AIA trial proceedings, also known as Patent Trial and Appeal Board (PTAB) trial proceedings. The rules published on August 20, 2015 and follow the more “ministerial changes” the USPTO issued in May 2015. The USPTO is soliciting comments from the public on the proposed rules with comments due by October 19, 2015 (60 days from publication). The USPTO will also discuss the proposed rules in its upcoming Road Show series scheduled for August 24, 2015 (Santa Clara, CA), August 26, 2015 (Dallas, TX), and August 28, 2015 (Alexandria, VA).
The proposed rules impact five main aspects of the proceedings:
The proposed rules formally implement some of the current Board practices (e.g., claim construction, demonstratives), which should have little impact on future proceedings. The proposed rules also implement some changes that should be beneficial to patent owners, including, e.g., allowing new testimonial evidence before the Board decides institution and replacing page limits with word count limits. In addition, the proposed rules implement a more explicit duty of candor and good faith for all persons practicing before the Board. While the proposed rules include several comments and responses related to motions to amend and multiple proceedings (joinder, stays), the proposed rules do not include any substantive changes to these areas of practice. However, the USPTO will publish a revised Office Patent Trial Practice Guide with the final rules package, so more guidance may be forthcoming.
United States Patent and Trademark Office (USPTO), claim construction, Patent Trial and Appeal Board (PTAB)
Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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