Potential Rule Changes Affecting Post-Grant Proceedings at the USPTOJune 12, 2020

The United States Patent and Trademark Office (USPTO) is proposing changes to a number of rules applied to post-grant proceedings before the Patent Trial and Appeal Board (Board). The proposed rules, which were published in the Federal Register on May 27, 2020, would affect inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings. For the full text of the Federal Register publication, see here. The motivation behind the proposed rules stems from the 2018 Supreme Court decision in SAS Institute Inc. v. Iancu, Case No. 16-969 (Sup. Ct., April 24, 2018).

The process of initiating a post-grant proceeding typically begins with a petitioner filing a petition, which includes, among other requirements, an identification of each claim challenged and grounds on which the challenge is based. Following the petition, the Board decides whether or not to institute the post-grant proceeding. Previously, under 37 CFR 42.108(a) and 42.208(a), the Board had the discretion to institute the post-grant proceeding on all or some of the challenged claims and grounds of unpatentability asserted by the petitioner. However, the Supreme Court held in SAS that a decision to institute an IPR may not institute on fewer than all claims challenged in a petition. In other words, the Board must institute on all claims challenged in the petition or deny the petition.

Therefore, the USPTO proposes the following changes: (1) In all pending IPR, PGR, and CBM proceedings, the Board would either institute review on all of the challenged claims and grounds of unpatentability presented in the petition, or deny the petition; (2) permit replies and patent owner responses addressing issues in the institution decision, and allowing sur-replies to principal briefs; and (3) eliminate the presumption that a genuine issue of material fact created by a patent owner’s testimonial evidence will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a review.

In response to issues arising from SAS, the changes in (2) allows both the petitioner and patent owner the ability to address issues discussed in the institution decision. The proposed change in (3) stems from concerns that the presumption in favor of the petitioner may be discouraging patent owners from filing testimonial evidence with their preliminary responses. Instead, the presumption will be eliminated, and testimonial evidence will be taken into account as part of the totality of the evidence.

For any concerns regarding the proposed rules, the USPTO is accepting comments from the public. Written comments must be received on or before June 26, 2020 to ensure consideration.

Tina G. Yin-Sowatzke, Pharm.D. is an Associate Attorney in the MVS  Biotechnology & Chemical Practice Groups. To learn more, visit our  MVS website , or contact Tina directly via  email .

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