New Changes Proposed for PTAB Trial Proceedings RulesAugust 20, 2015

USPTO Director Michelle K. Lee discussed proposed rule changes in herblog post for Wednesday, August 19. The first set of rules governing inter partes review, post-grant review, and covered business method patent proceedings was issued in 2012 and a number public comment sessions were held to gather feedback on these rules. In March of 2015, the USPTO issued a set of “quick fixes”to these rules with a promise of a second rules package in the Summer of 2015. This second package is now published on theFederal Register.

The Director touches on four particular changes that are designed to improve the quality and efficiency of the proceedings. First, the rules propose that patent owners may include new testimonial evidence such as a declaration made by an expert. Second, a proposed requirement for practitioners before the PTAB mirrors the requirements of Federal Rule of Civil Procedure 11, giving the PTAB recourse for misconduct. Third, the rules are clarified to reflect that when the patent will expire during the course of proceedings, the district court standard for claim construction will be used. In all other cases, the claims will be construed according to their broadest reasonable interpretation. Finally, the rules note that the PTAB has been developing its rules on motions-to-amend through its decisions. The proposed rules also address requests for additional discovery, live testimony, and confidential information.

Comments are being accepted on the new rules until October 19, 2015. The USPTO is also conducting public road shows to discuss the proposed rules and improvements to PTAB proceedings. These will be held: August 24th inSanta Clara, CA, August 26th in Dallas, TX, and August 28th at USPTO headquarters in Alexandria, VA. The USPTO is hopeful that final rules will be released by the end of the year.

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