July 10, 2015

USPTO revises rules for AIA trials

4 min

On May 19, 2015, the USPTO released a final rule package, which amends the rules of practice for AIA trials before the Patent Trial and Appeal Board (PTAB).[1]  This is the first of two rules packages that the USPTO is releasing in response to public feedback regarding the current rules for AIA trials.[2]  The first package contains final rules reflecting “ministerial changes to the rules,” whereas the second proposed package “will issue later to address more involved changes to the rules....”[3]  The May 19 rules package codifies the quick fixes to AIA trials pertaining to page limits and motions to amend.  These quick fixes were first adopted on March 27, 2015 after USPTO Director Michelle K. Lee announced them on the Director’s forum blog.[4]  The tables below provide an overview of most of the rule changes.[5]

Changes to general rules governing AIA trials (effective May 19, 2015)
  Changes from current practice Rule(s) Amended
Patent Owner's Motion to Amend The rules now require that the claims be in an appendix.
Page limit for Motions to Amend increased from fifteen (15) to twenty-five (25) pages exclusive of any claim appendix.
Page limit for Replies to Oppositions to Motions to Amend increased from five (5) to twelve (12) pages.
37 C.F.R. §§ 42.24(a), (c); 41.121(b); 42.221(b)
Petitioner's Reply Page limit for Petitioner’s reply to Patent Owner’s Response to Petition increased from fifteen (15) to twenty-five (25) pages. 37 C.F.R. § 42.24(c)(1)
Required Font Rather than 14-point font, the PTAB is now requiring "14-point, Times New Roman proportional font with normal spacing" for all filings. 37 C.F.R. § 42.6(a)(2)
Counsel Amendment to clarify that more than one back-up counsel may be named. 37 C.F.R. § 42.10(a)
Fees Amendments to clarify that for the claim fee calculation "each claim challenged will be counted as well as any claim from which a challenged claim depends, unless the parent claim is separately challenged." 37 C.F.R. § 41.15(a)(3), (a)(4), (b)(3), (b)(4)
Oppositions and Replies and Page Limits for Petitions, Motions, Oppositions and Replies Amendments to clarify that supplying a statement of a material fact is optional.  However, when responding to or opposing a paper that contains a statement of material fact, "a listing of facts that are admitted, denied, or cannot be admitted or denied" must be included. 37 C.F.R. §§ 42.23(a), 42.24(c)
Discovery Clarification that routine discovery is limited to cross-examination and that either party is permitted to file testimony as an exhibit. 37 C.F.R. § 42.51(b)(1)(ii)
Taking Testimony Amendments to clarify that uncompelled direct testimony must be submitted in an affidavit and that either party may file testimony as an exhibit. 37 C.F.R. §§ 42.53(c)(2), (f)(7)
Objection Rules governing objections are amended to be consistent with the Office Patent Trail Practice Guide.  Specifically, objections must now be filed with PTAB. 37 C.F.R. § 42.64(b)(1)
Decision on Petition or Motion Amendment to clarify that only one request for rehearing may be filed as a matter of right. 37 C.F.R. § 42.71(d)
Changes to rules governing covered business method reviews (CBM) (effective May 19, 2015)
  Changes from current practice Rule(s) Amended
Procedure and Pendency Amendments to the rules to clarify that pendency of a CBM can be extended in case of joinder similar to the rules governing the other types of AIA trials. 37 C.F.R. § 42.300(c)
Who may petition for a CBM Amendments to reflect that no CBM can be instituted where the petitioner filed a civil action challenging the patent’s validity prior to filing of the CBM petition.
Amendments reflect the AIA and current case law.
37 C.F.R. § 42.302

Venable will continue monitoring changes to AIA trial practice and procedures and will provide an update on the second rules package when it issues.

[1] Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, 80 Fed. Reg. 28561-566 (May 19, 2015) (to be codified at 37 C.F.R. Part 42).

[2] Id. at 28561.

[3] Id.

[4] Available online at http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for (last accessed May 20, 2015).

[5] 80 Fed. Reg. at 28562-566 (the changes also include a clerical correction to the title of 37 C.F.R. § 42.64).