Since the institution of the America-Invents-Act (AIA, the U.S. Patent and Trademark Office (USPTO) has been experiencing growing pains with increasing numbers of post-grant proceedings. In an effort to fine tune the system, on March 31, the USPTO finalized a new set of rules overhauling trial practices affecting America Invents Act post-grant proceedings including inter partes review (IPR), post-grant review (PGR), the transitional program for covered business method patents, and derivation proceedings. (https://www.ptabtrialinsights.com/wp-content/uploads/sites/13/2016/03/final-rules.pdf) The new set of rules will apply to all petitions filed on or after May 1st in addition to ongoing AIA preliminary proceedings and trials before the USPTO. Through new opportunities offered to the patent owner, the rules aim to reduce the number of inter-partes and AIA proceedings. The most noteworthy aspect of the amendments provides patent owners the chance to assert newly established evidence or testimony against the petitioner; however, the petitioner is given the right to seek leave to reply to any new evidence. (http://www.natlawreview.com/article/uspto-releases-new-rules-aia-post-grant-proceedings) (https://www.law360.com/ip/articles/778708/uspto-unveils-new-rules-on-aia-reviews-sanctions?spotlight=1)
A summary of the new rules is as follows:
1) All patent owners may include relevant testimony and new evidence in their preliminary response to a petition. The previous policy limited evidence that could be presented in the preliminary response.
2) Subject to a showing of good cause, a petitioner can seek leave to file a reply to a patentee’s preliminary response in an IPR or PGR.
3) Papers filed in a proceeding are now subject to certification similar to that provided for under Rule 11. Violations of the new rule will allow for motions of sanction.
4) Review of oral hearing demonstratives have been extended from five business days to seven business days.
5) Many papers, petitions included, are subject to new word counts. As a result, practitioners will be limited to shorter lengthens than those to which they were generally accustomed to in the past.
6) A clarification that the Patent Trial and Appeal Board will follow the same claim construction standards as district courts for patents that will expire during a proceeding (and can not be amended). However, the use of the broadest reasonable interpretation standard holds for all other patents.
Though the main thrust of the changes is geared toward the additional step in post grant proceedings, the impact of the amendments can be extensive and alter patentees’ and petitioners’ strategies alike. Considering the short three months allotted for filing a preliminary response, patentees who believe their patents may be subject to AIA proceedings in the future will do well to prepare experts and collect evidence ahead of time. Retroactive application of the rules may cause patentees undergoing pending proceedings stress as they scramble in the next couple of months to establish new evidence and testimony for their preliminary responses.
The newly released amendments were originally a package deal proposed in August of 2015. While the changes mainly track the August proposals, the amendments do not include the suggested single APJ (Administrative Patent Judge) adjudication program. Under the current procedures, a three APJ panel together makes institutional decisions in post-grant proceedings. Had the USPTO adopted the single APJ pilot program, the office would have been able to speed up the dockets and alleviate the wait. However, comments from the public dissuaded the office from making the move.
With the rule changes finalized, the USPTO’s next move is to amend its Office Patent Trial Practice Guide to reflect the amendments. (http://www.lexology.com/library/detail.aspx?g=59b38b4b-f501-4260-8ff1-385df203347e)