USPTO Proposes Rule Changing AIA Trial Rules on Institution and Responsive Briefing

Written May 28, 2020

The United States Patent and Trademark Office (USPTO) on May 26, 2020, issued a notice of proposed rulemaking to amend the rules of practice in view of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). The proposed rule provides that if the Board institutes inter partes review, post-grant review, or transitional program for covered business method patents proceedings, trial will proceed on all challenged claims and on all grounds of unpatentability. 

The USPTO further proposes changes to the rules to conform to the current standard practice of providing sur-replies to principal briefs and providing that a patent owner response and reply may respond to a decision on institution. 

The full text of the notice is available for inspection at the Federal Register. The public may submit comments on the proposed rulemaking to within 30 days from the notice of publication.