Navigate Up
Sign In

Director Lee Anticipates PTAB Rule Changes, Including Increased Page Limits

USPTO Director Michelle Lee in her March 27, 2015, blog discussed the anticipated revisions to the rules of proceedings before the Patent Trial and Appeal Board.  While most will be proposed and implemented in a “three-part roll-out plan,” she announced that increased page limits, to be included this spring as quick fix proposals, would be effective immediately.

According to Director Lee, the revisions will increase page limits for a motion to amend from 15 to 25 pages (with a commensurate amount of additional pages for the opposition and reply briefing).  The proposals will also provide for claims appendix and increase of the page limit for a petitioner’s reply brief to 25 pages.

A second proposed-rule package on more involved changes will be published later this summer, Director Lee reported. Among other things, those proposals will address:

  • further modifications to the motion to amend process;
  • adjustments to the evidence that can be provided in the patent owner preliminary response;
  • clarification of the claim construction standard as applied to expired patents in AIA proceedings;
  • adjustments to the scope of additional discovery;
  • multiple proceedings before the Office involving the same patent;
  • use of live testimony at oral hearings;
  • the importance of discovery on real-party-in-interest evidence; and
  • whether parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation.

Director Lee acknowledged that some have expressed a concern that the judges participating in a decision to institute a trial may not be completely objective in the trial phase of a case. With that in mind, she added, the Office is considering developing a single-judge pilot program for institution. She explained as follows:

“Under this pilot, a single judge would make the decision on whether to institute a trial. Two new judges would be added to the panel only when and if a trial is instituted. In the interest of efficiency, the first judge would remain on the panel; but in the interest of having ‘fresh eyes,’ the two additional judges would not have participated in the matter prior to institution. After running this pilot for a select number of cases, we would study the results to determine the approach to follow in the future.”

With respect to motions to amend, the proposals may “emphasize” that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be “entered”). For the amendment to result in the issuance of amended claims, a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office.

In closing, Director Lee indicated that the Office intends to continue this iterative approach of seeking user input after this round of changes has been in effect for some time.

To read Director Lee’s blog, click here.​​​