New Regulations from the USPTO on PTAB Proceedings

April 2021

CIPA Journal

The US Patent and Trademark Office (USPTO) has promulgated two new regulation packages relating to proceedings before the Patent Trial and Appeal Board (PTAB or Board). The first package primarily affects pre-institution practice and applies to petitions filed on or after 8 January 2021. The second package affects motions to amend and applies to proceedings instituted on or after 20 January 2021.

This article summarizes the rule changes, discusses the background leading up to them, and notes some strategic considerations for petitioners and patent owners. While most of the changes formally adopt existing practices, the article highlights their effect and discusses the ongoing debate about the balance between patent owners and petitioners faced with patent challenges before the Board.

Read "New Regulations from the USPTO on PTAB Proceedings"

Originally printed in CIPA Journal on April 2021. 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.