On April 1, 2016 the USPTO published the final rules that make substantive changes to the Patent Trial and Appeal Board (PTAB) trial practice rules for inter partes review (IPR), covered business method (CBM), and post-grant review (PGR) proceedings.

The final rules:

• Allow new testimonial evidence to be submitted with a patent owner's preliminary response

• Add a Rule 11-type certification for papers filed in a proceeding

• Allow a district court-type construction approach for claims of patents that will expire before entry of a final written decision

• Replace the current page limit with a word count limit for major briefing

There are some key takeaways for a person interested in these PTAB rules changes, potentially requiring follow-up from the patent owner.

Background

The USPTO's PTAB trial proceedings continue to have a major impact on the value of a company's intellectual property and a company's ability to enforce a patent previously examined by the USPTO. The USPTO implemented rules relating to the IPR, CBM and PGR proceedings in September 2012. In May 2015, the USPTO made some minor changes to these original rules by providing 10 additional pages for a patent owner's motion to amend and a petitioner's reply brief. However, these minor changes did not address a perceived imbalance in the original PTAB rules.

For example, the original PTAB rules allowed only a petitioner to include expert testimonial evidence in a petition, while patent owners were only permitted to include such evidence after institution of a proceeding. The final rules now allow both a petitioner and patent owner to submit expert testimonial evidence in their initial filings.

In addition, the original rules only allowed a petitioner-friendly broadest reasonable interpretation (BRI) claim construction standard; the final rules allow a more narrow, patent owner-friendly district court claim construction standard when a patent is expected to expire before entry of a final written decision. Moreover, the final rules give the PTAB authority to issue Rule 11-like sanctions when either party is deemed to use the PTAB proceedings for an improper purpose including an abuse of the process, discovery proceedings or causing an unnecessary delay in the proceedings.

Key Takeaways

The effective date of these rules is May 1, 2016 (30 days from the publication of the Federal Register notice). The rules apply to all AIA petitions filed on or after May 1, 2016, and to any ongoing AIA preliminary proceedings. A patent owner, for example, that previously submitted a patent owner preliminary response may want to supplement its earlier response with an expert's declaration before the institution decision. Moreover, the petitions will be reviewed using the BRI standard unless either party (e.g., the patent owner) can show that the patent is going to expire before entry of a final written decision.