On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) released new proposed rules governing trials at the Patent Trial and Appeal Board (PTAB), which aim to make it easier for patent owners to defend patents at the PTAB. While the USPTO held firm to certain aspects of the rules, such as the use of the “broadest reasonable interpretation” standard for assessing patentability and the standard for amending claims, the new rules replace page limits with word counts, allow patent owners to include expert testimony in their preliminary response, and address misconduct. Bloomberg BNA reached to Finnegan attorneys Aaron J. Capron and Timothy P. McAnulty for their thoughts on the new rules.
Capron and McAnulty believe that replacing page limits with word counts will benefit patent owners. In relation to the proposed Rule 11-like sanction, they said, “The proposed rules implement a more explicit duty of candor and good faith for all persons practicing before the Board.”
