United States Patent and Trademark Office (USPTO) Issues Proposed Changes to Patent Trial and Appeal Board (PTAB) Trial Rules

On August 19, 2015, the United States Patent and Trademark Office (“USPTO”) issued newly-proposed rule changes in response to input acquired through the public America Invents Act (“AIA”) Trial Round Tables earlier this year.  These proposed rules are a more comprehensive package of rule changes and have been published in the Federal Register.

The proposed rules relate primarily to three areas.

First, patent owners are allowed to provide new testimonial evidence in his or her preliminary response to a petition for Inter Partes Review (“IPR”) or Post-Grant Review (“PGR”).  In order to meet the mandated three-month timeline for a decision, the petitioner will not have a right to cross-examine. Thus, the Board will resolve any material factual disputes in favor of the petitioner for the purposes of making a determination. However, a petitioner may request permission to file a reply brief to address a patent owner’s new testimonial evidence.

Second, there is a new requirement similar to Rule 11 for all papers filed with the PTAB.  This now means that when signing any paper presented to the Board, the person signing is acknowledging that the signed documents is not being presented for an improper purpose and that it is not frivolous; otherwise the Board can impose sanctions.

Last, there will be a different claim construction standard for patents set to expire during a PTAB proceeding.  For most proceedings, the “broadest reasonable interpretation” standard will be used.

However, for those patents that will expire during a PTAB proceeding, the proposed rules use the Phillips-type claim construction standard, such that the words of the claims are given their ordinary meaning in the context of the patent documents.   Therefore, for expiring patents, the use of a Phillips-type claim construction standard may make such patents more difficult to invalidate in a PTAB proceeding.

Michelle K. Lee, Director of the USPTO, also stated that as of July 31, 2015, the PTAB has received a total of 3,655 petitions, of which 3,277 are IPRs, 368 are transitional post-grant reviews for covered business method patents (“CBMs”), and 10 are PGRs. Trials have been instituted in 1,389 IPRs, 185 CBMs, and 2 PGRs.