The U.S. Patent and Trademark Office (USPTO) has unveiled a series of new rules that provide for significant changes to the procedures followed in Patent Trial and Appeal Board (PTAB) proceedings, including inter partes review, post-grant review, covered business method, and derivation proceedings.

The new rules, which are effective May 2, 2016, do the following:

  • Strengthen the position of patent owners during the initial stages of the PTAB proceedings
  • Provide new mechanisms for addressing attorney misconduct during the proceedings
  • Provide for a modified claim construction standard in proceedings related to a soon-expiring patent
  • Replace the current page limits with word counts

Under the new rules, patent owners will be permitted to include new expert declarations and testimony in their preliminary response to a review petition. This is a departure from the existing rules, which did not permit a patent owner to present such evidence until after the PTAB had already granted the review petition and instituted a trial. This change allows patent owners the ability to more effectively argue against the initial grant of a review petition. However, "if a genuine issue of material fact is created by testimonial evidence, the issue will be resolved in favor of petitioner solely for institution purposes." 

The new rules also create a "Rule 11-type certification" that is required for any papers filed in PTAB proceedings. This certification confirms that:

  • The paper is not presented for an improper purpose
  • The legal contentions presented in the paper are warranted by existing law or a nonfrivolous argument for modification of existing law
  • The presented allegations have or are likely to have evidentiary support
  • Any denials of factual contentions are warranted on the evidence 

Failure to comply with this certification can lead to sanctions, which can be requested by the opposing party in the proceedings or initiated by the PTAB. The USPTO expects these certification requirements and sanction options will deter petitioners from requesting review of a patent without first performing a comprehensive investigation.

In cases where the patent at issue will expire within 18 months of the filing of the review petition, the new rules allow either party to request a "district court-type claim construction" of the claims at issue rather than a construction based upon the broadest reasonable claim interpretation. However, the broadest reasonable claim interpretation will continue to be used for claims that will not expire during the pendency of the proceedings.

Finally, in what will be a great relief to the practitioners who appear before the PTAB, the new rules replace the current page limitation for briefs with a word count limit. Such a change is similar to the requirements of briefing at the Federal Circuit and may help address the previous gamesmanship of parties in their effort to circumvent the previous page limitations.

Ballard Spahr's Intellectual Property Group comprises trial lawyers and counselors who are on the cutting edge of patent, trademark, unfair competition, copyright, trade secret, Internet, licensing, and trade dress matters. We bring and defend IP cases in courts throughout the country, and before the PTAB and TTAB. We have a deep bench of lawyers with advanced technical degrees who identify and protect our clients' global intellectual property interests, and offer strategic prosecution and due diligence guidance relating to strategic product development, mergers and acquisitions and licensing, and portfolio restructuring.

Copyright © 2016 by Ballard Spahr LLP.
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