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USPTO Issues Revisions to PTAB Rules of Procedure

The U.S. Patent and Trademark Office on April 1, 2016, published revisions to the Rules of Procedure for the Patent Trial and Appeal Board. 81 Fed. Reg. 18750. The Federal Register Notice includes changes to the rules on duty of candor, pleading page limits, and grounds for instituting an inter partes or post grant review proceeding. The Notice states that the PTAB will continue to apply the broadest reasonable interpretation to non-expired patent claims and will not change the requirements for motions to amend patent claims at issue.

The final rules go into effect on May 2, 2016, and apply to all petitions filed on or after the effective date and to any ongoing AIA preliminary proceeding or trial before the Office.

Among the provision revised are:

§ 42.11 on duty of candor, elaborating in more detail the signature and representational requirements. The revisions also detail sanctions for violations of the duty of candor.

  • § 42.23(b) on oppositions and replies, adding arguments in a "patent owner preliminary response" as content that may be addressed in petitioner's reply brief.
  • § 42.24 provision on page limits for petitions changes the page limits to word limits, e.g., 60 words for an inter partes petition is changes to 14,000 words. This provision also excludes a variety of matters from the word count, including material required by § 42.304 on demonstrating that the subject matter of the petition is a covered business method.
  • § 42.100(b) on procedure is revised to state that a party may request the district court standard for claim construction for a patent expected to expire 18 months from the petition filing date.
  • § 42.108(c) on grounds for instituting an IPR is revised to elaborate what is taken into account with the new underlined language below:

"Sufficient grounds. Inter partes review shall not be instituted for a ground of unpatentability unless the Board decides that the petition supporting the ground would demonstrate that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable. The Board's decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. A petitioner may seek leave to file a reply to the preliminary response in accordance with §§ 42.23 and 42.24(c). Any such request must make a showing of good cause."

Corresponding revisions are made to post grant review provisions.

To read the Federal Register Notice, click here​. ​