AIPLA Comments on Briefing Discretionary Denial Issues

Written June 21, 2024

Arlington, VA. June 17, 2024 - The American Intellectual Property Law Association (AIPLA) submitted comments to the USPTO on Patent Trial and Appeal Board Rules of Practice for Briefing Discretionary Denial Issues, and Rules for 325(d) Considerations, Instituting Parallel and Serial Petitions, and Termination Due to Settlement Agreement. 


AIPLA commends the USPTO's efforts to streamline briefing key issues before the PTAB prior to implementation. AIPLA continues to support notice and comment rulemaking as the preferred mechanism to address the conduct of AIA trial proceedings. Additionally, the comments express support for the NPRM's proposal to allow separate briefing on discretionary denial issues, improving fairness for petitioners and patent owners. This modification will enable petitioners to focus on patentability arguments while addressing procedural issues separately. The comments express concern about the deadlines for filing requests for discretionary denial and recommend concurrent deadlines for the preliminary response and request for discretionary denial to alleviate undue burdens on patent owners. Additionally, the comments suggest refining the definition of "serial petition" for better alignment with proposed sections. AIPLA appreciates the USPTO's ongoing efforts to refine PTAB procedures and welcomes further discussions on these matters. 


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