Three-Part Roll-Out Plan for PTAB Proceedings

April 8, 2015

On March 27, 2015, USPTO Director Michelle Lee announced revisions to the rules of proceedings before the Patent Trial and Appeal Board (PTAB) under a “three-part roll-out plan.”

First, a “quick fix” rule package will be issued in the spring that increases the page limits for a motion to amend from 15 to 25 pages (with a commensurate amount of additional pages for the opposition and reply briefing), along with the addition of a claims appendix. The number of pages for a petitioner’s reply brief will also increase to 25 pages. These quick fixes will be effective immediately through the PTAB judges.

Second, a proposed-rule package will be published this summer with more involved changes, such as (1) further modifications to the motion to amend process; (2) adjustments to the evidence that can be provided in the patent owner preliminary response; (3) clarifications to the claim construction standard as applied to expired patents in AIA proceedings; (4) adjustments to the scope of additional discovery; (5) how to handle multiple proceedings before the Office involving the same patent; (6) the use of live testimony at oral hearings; (7) the importance of discovery on real-party-in-interest evidence; and (8) the possibility of requiring parties to make a certification with their filings similar to a Rule 11 certification in district court litigation.

Third, the USPTO may develop a single-judge pilot program for instituting an inter partes review. Under the pilot, a single judge would make the decision on whether to institute a trial, and then two new judges would be added to the panel only when and if a trial is instituted.

The Director’s announcement is available at: http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for