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1 April 2016Patents

USPTO publishes new rules on PTAB reviews

The US Patent and Trademark Office (USPTO) has published a new set of rules for cases heard before the Patent Trial and Appeal Board (PTAB).

The rules, published in the Federal Register today, April 1, allow patent owners to give more robust responses to petitions for review and also establish sanctions for inadequate pre-filing investigations.

Included in the changes, which were first proposed by the office in August, is the ability for patent owners to include any relevant testimonial evidence with their opposition to a petition.

According to the USPTO, this will address concerns that patent owners were disadvantaged by previous rules that limited the evidence that could be presented with their preliminary response.

Other changes that have been published include adding a rule 11-type certification for papers filed used in district courts—under that rule attorneys can be sanctioned for not doing an adequate pre-filing investigation.

The rules also clarify that the PTAB will use the Phillips standard, the claim construction standard used by district courts, for patents that will expire during a proceeding, while confirming the use of broadest reasonable interpretation for all other patents.

Justin Oliver, partner at law firm Fitzpatrick, Cella, Harper & Scinto, said the biggest change is that patent owners will be permitted to submit testimonial evidence with preliminary responses.

“The preliminary response sets forth the reasons why the patent owner believes that a trial should not be instituted,” he said.

Previously, a patent owner could not rebut the testimony of the petitioner’s expert with its own expert testimony until after a trial was instituted.

“In theory, this should help patent owners avoid institution,” he added.

Julianne Hartzell, partner at law firm Marshall, Gerstein & Borun, said each of the changes “will help to address patent owner concerns that the inter partes review process makes it too easy to invalidate patents”.

She added that allowing any party to request the application of the Phillips claim construction standard for patents expiring within 18 months of the entry of the notice of filing date will make the invalidity analysis more similar to that used in district court.

“However, the burden of proof in PTAB proceedings remains a preponderance, rather than the clear and convincing standard used in district courts,” she added.

A proposal to have single judge evaluate inter partes review trials will not be carried forward after receiving negative responses, the USPTO said.

Steve Maebius, partner at Foley & Lardner, agreed with Oliver that the most important change was allowing patent owners to present new evidence in a preliminary response. But he said he was surprised that the office had decided not to implement the one judge pilot scheme.

“A single administrative patent judge determination of institution decisions would have allowed the USPTO to extend its capacity,” he said.

The rules will take effect in 30 days.

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