Friday, April 1, 2016

PTAB - Final Rules for Rules of Procedure for AIA Trials

Today, the USPTO published changes to the Rules of Procedure for America Invents Act (AIA) trials before the Patent Trial and Appeal Board (PTAB).

As stated in the Federal Register: "This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (“IPR”), post-grant review (“PGR”), the transitional program for covered business method patents (“CBM”), and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act (“AIA”) providing for trials before the Office."

Specifically, PTAB rules address claim construction, permit a patent owner to submit testimony evidence in the preliminary response on whether to institute an inter partes review, establish Rule 11 certification and sanctions for violations of the duty of candor, and replace the 60-page limit on a petition with a 14,000 word limit. A key change is how Board should interpret patent claims in AIA trials. The final rule state a party may request a narrow district court standard for claim construction if the patent is expected to expire within 18 months from the filing date of the petition challenging its validity. The logic is claims cannot be amended in an expired patent. The final rules state if a US patent is not expired it can be amended (so they say!) so should be given the broadest reasonable interpretation (BRI) which tends to result in invalidity.

In the meantime, in Cuozzo Speed Technologies, LLC v. Michelle Lee, Director of USPTO, the Supreme Court is considering claim construction in AIA trials. See the SCOTUS blog for details.

Also see the PTAB blog for other details on the final rules.

Copyright © 2016 Robert Moll. All rights reserved.