The America Invents Act (AIA) was enacted into law on September 16, 2011. A major provision of the AIA provided for a number of post grant proceedings to be heard by the rebranded Patent Trial and Appeal Board (PTAB). These proceedings include Inter Partes Review (IPR), Post Grant Review (PGR) and the transitional program for Covered Business Methods (CBM). The Office issued initial rules of practice for proceedings before the PTAB in 2012 and published a first revision to those rules in May, 2015. On August 18, the Office published a second set of proposed rule changes addressing a number of potential revisions to practice before the PTAB.
Among the most significant proposed changes is a provision to allow a patent owner to submit new testimonial evidence in its preliminary response to the petition. Under the proposed change, a patent owner would be allowed to submit testimonial evidence, such as an expert declaration, in a preliminary response prior to the decision to institute the proceeding. This change would provide the patent owner an opportunity to provide the PTAB with a more complete set of facts on which to base its decision whether to institute the proceeding. However, the proposed change includes the caveat that all disputed material facts will be construed in the light most favorable to the petitioner with respect to the decision whether to institute the proceeding. Additionally, if the patent owner choses to include supporting evidence in the preliminary response, the petitioner may seek leave to file a reply to the preliminary response. The threshold for the decision to institute remains unchanged, requiring that the PTAB find that there is a reasonable likelihood that at least one claim is unpatentable.
The Office also proposed procedural adjustments to the rules. First, the Office proposed limiting certain filings by word count instead of page number. The proposed word count limits apply to the petition, the patent owner’s preliminary response, the patent owner’s response, and the petitioner’s reply brief. The proposed change arises in response to parties providing attorney argument in (single-spaced) claim charts in an effort to circumvent page limits. The PTAB was required to identify such argument and disregard it, which resulted in inefficient scrutiny of the document. Thus, switching from a page limit to a word count limit would permit parties to present argument in claim charts. Second, the Office proposes instituting a Rule-11 type certification for all papers filed with the PTAB with the possibility of sanctions for practitioners and parties in response to non-compliance.
The proposed rules are currently open to the public for comments, which should be submitted by October 19, 2015. The Office expects to issue final rules based on the proposed changes and comments by the end of the year.