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13 August 2018Patents

USPTO updates AIA guidance to allow for pre-hearing conferences

The US Patent and Trademark Office will permit certain pre-hearing conferences in America Invents Act (AIA) trials, according to updated guidance from the office.

Published today, August 13, the update provides guidance on standard practices before the Patent Trial and Appeal Board (PTAB) in post-grant trial procedures. The original guide was published in August 2012, when the AIA came into effect.

“The office is committed to updating the practice guide to take into account stakeholder feedback, lessons learned during the years since the first AIA trial, and the natural evolution of the board’s practices,” said the update.

Parties may now request a pre-hearing conference to resolve “potentially dispositive issues” prior to the hearing.

The PTAB normally waits until after the oral hearing, when it reviews the record in its entirety, to decide the merits of any motions to exclude.

However, after the update and in certain circumstances, the “evidence may be so central to the parties’ dispute that mootness is unlikely and early resolution of the motion to exclude may be warranted”.

Either party may request a pre-hearing conference to seek early resolution of the motion to exclude.

While the guidance states that a motion to strike should be granted only on rare occasions, the authorisation to file the motion should be requested within one week of the allegedly improper submission.

In addition, parties can request a pre-hearing conference.

“The purpose of the pre-hearing conference is to afford the parties the opportunity to preview (but not argue) the issues to be discussed at the oral hearing, and to seek the board’s guidance as to particular issues that the panel would like addressed by the parties,” said the guidance.

The guidance also allows for petitioners, in reply briefs, to address issues discussed in the institution decision, in light of the US Supreme Court’s ruling in SAS Institute v Iancu.

In SAS Institute, the court confirmed that the PTAB cannot choose to review only some challenged claims in an inter partes review—it must assess them all.

“More importantly, however, patent owner motions for observation are now replaced by a sur-reply (new brief given as a matter of right),” explained Scott McKeown, partner at Ropes & Gray, in a blog post.

The sur-reply practice essentially replaces the procedure of filing observations on cross-examination testimony.

McKeown added: “The update provides a number of changes to update the guide as to outdated material, but more importantly, provides significant, new benefits for patent owners.”

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