PTAB Issues Final Rules for Improved Proceedings
Guest blog by Russ Slifer, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (USPTO)
After extensive public outreach, the USPTO has issued new final rules to make targeted modifications for trial practice before the Patent Trial and Appeal Board (PTAB), proactively addressing concerns of its users and improving proceedings (as further detailed in our Federal Register Notice.)
These amendments to the rules were proposed to the public in August 2015 to elicit additional stakeholder input and are a commitment to continue to keep the Leahy-Smith America Invents Act of 2011 trial process as efficient and fair as possible for both the petitioner and patent owner.
Since the inception of the PTAB, we have received over 4,600 petitions – three times the amount we expected. Despite this number, we still have not yet missed a single statutory deadline. Even with the surge of filings, the time to claim construction in the PTAB occurs within 180 days as opposed to the average of one year in Federal District Courts and PTAB proceedings can cost less than half than that of District Courts. Even with the speed and cost savings, PTAB decisions have enjoyed a high rate of affirmance in the Federal Circuit Court of Appeals.
As hard as we worked on our initial roll-out of these proceedings, we never assumed that our rules would be perfect at the outset. We anticipated having to revisit some of the guidelines and making refinements along the way.
One of the first actions Director Lee undertook was to kick off a series of listening tours on the PTAB, which started after the proceedings had been running for approximately two years. The goal was to check-in with stakeholders and communities and get feedback. Judges from the PTAB visited eight cities around the country to meet directly with practitioners.
A year later, the USPTO announced a series of “quick fixes” that the PTAB was able to make immediately in response to what we learned. These were simple, but important changes, such as allowing a claims appendix to be filed with a motion to amend and expansion of page limits for certain filings.
Several months after that, we released proposals for more substantive changes via a notice of proposed rulemaking and sought further public input.
Now, we are publishing the culmination of that stakeholder input in the form of new final rules. Specifically, the new rules will:
- Allow patent owners to include, with their opposition to a petition to institute a proceeding, any relevant testimonial evidence, addressing concerns that patent owners are disadvantaged by previous rules that limited the evidence that could be presented with their preliminary response to the petition;
- Add a Rule 11-type certification for papers filed in a proceeding;
- Clarify that the PTAB will use the claim construction standard used by district courts for patents that will expire during a proceeding and therefore, cannot be amended, while confirming the use of broadest reasonable interpretation (BRI) for all other patents; and
- Replace the current page limit with a word count limit for major briefings.
The USPTO also will amend its Office Patent Trial Practice Guide to reflect these rule changes and developments in practice concerning how the USPTO handles motions to amend, additional discovery, real party-in-interest and privy issues, and confidential information.
Additionally, after receiving negative responses from a Federal Register request for comments on a proposed pilot program pertaining to the institution of post grant administrative trials by a single judge, we have decided not to go forward with the pilot program at this time.
I believe the process we followed here is an excellent example of how we are never satisfied with the status quo, how we are always looking for ways to improve, and how we listen carefully to our stakeholders for input.
We will continue to refine the rules governing AIA trials going forward to ensure fairness and efficiency while meeting all congressional mandates.