From testimonial evidence to word count: all change at the PTAB

06-05-2016

John Pegram and Stuart Nelson

From testimonial evidence to word count: all change at the PTAB

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Patentees and petitioners should be aware of several important changes at the Patent Trial and Appeal Board. John Pegram and Stuart Nelson of Fish & Richardson round up some of the notable amendments.

The US Patent and Trademark Office (USPTO) has made some significant changes in its rules of practice before the Patent Trial and Appeal Board PTAB, effective May 2, 2016, but declined to make other suggested changes. Revisions to the Office Trial Practice Guide, corresponding to rule changes, are in progress.

The most significant change permits patent owners to submit “new” expert declarations and testimonial evidence with their preliminary response in an inter partes review (IPR), covered business method or post-grant review when opposing institution of the proceeding.

Size limits for the major briefing papers filed at the PTAB are being changed from page limits to word count limits. Another significant change clarifies the PTAB’s authority to sanction bad behaviour.


Patent Trial and Appeal Board, Stuart Nelson, John Pegram, US Patent and Trademark Office, Fish & Richardson, patent, BRI,

WIPR