New Rules for Post-Grant Proceedings

The USPTO has proposed and instituted a number of new rules for post-grant proceedings before the Patent Trial and Appeal Board ("PTAB"). They fall into two categories: the "quick fix" and the "second round."

The "quick fix" rule package was finalized on May 19, 2015, and was effective immediately to institute a number of "quick" changes to post-grant rules. Probably the biggest rule change was in page limits. The page limit was increased from 15 to 25 in Petitioner's Reply, which makes it much easier to respond to the 60-page Patent Owner response. The page limit was also increased from 15 to 25 in both the Patent Owner's Motion to Amend and the Petitioner's Opposition to Motion to Amend, as well as from 5 to 15 pages in the Reply to Opposition. In addition, proposed claim amendments can now be included in an appendix, which does not count as part of the page limit. This alleviates one of the big hurdles to amending claims: too little space to make all the required showings. The quick fix also required the use of Times New Roman font in response to parties' use of smaller fonts that allow more words per page.

Additional clarifications and minor procedural changes were made, including requiring evidence objections to be filed instead of served, making the statement of material facts optional, allowing more than one backup counsel to be designated, requiring fees paid for unchallenged claims from which a challenged claim depends, and other discovery and procedural rules.

On August 20, 2015, the USPTO issued the "second round" of proposed rule changes. They include:

• Allow Patent Owners to include expert or other declarations with the preliminary response. Supporting evidence will be viewed in the light most favorable to the Petitioner, and the Petitioner may also seek leave to file a reply.
• Apply the broadest reasonable interpretation (BRI) claim construction standard in proceedings where the patent will expire after a final written decision, and apply Phillips claim construction to patents expiring before a final written decision.
• Require seven days between exchange of exhibits and the oral hearing.
• Require a word count (not page limit) for briefing. For example, the 60-page limit would be replaced with a 14,000-word limit.
• Add a Rule 11-type certification for all papers filed, to allow the Board to sanction noncompliance.

The addition of a declaration with the preliminary response and the optional reply may prove to be one of the biggest changes. They have the potential to increase costs for parties pre-institution, and also complicate the issue of which facts can be relied on by the PTAB at institution. The move to word count is a small but wise decision, as it should reduce disputes over formatting and improve readability. The addition of the Rule 11-type certification is controversial, but it is not clear how much practical impact it would have. These proposed rules have not yet been implemented, and time will tell which rules get implemented as proposed.

This article originally appeared in Fish's 2015 Post-Grant Report. Read the full report here.