PTO Announces Current and Anticipated “Quick-Fix” Changes to PTAB Practice

Authored by Grantland G. Drutchas

On Friday, March 27, Director Lee issued a statement on the PTO Blog, indicating several current and proposed “quick-fix” rule changes. Immediate changes include nearly doubling the number of pages for a motion to amend to up to 25 pages, along with the addition of a claims appendix. Opposition briefing and reply briefing will get a commensurate amount of additional pages. Judges will begin implementing these changes through scheduling orders effective immediately.

Upcoming anticipated rule changes (second “quick-fix” rule changes) include:

• Modifying the motion to amend process;
• Adjustments to the evidence a patent owner can provide in a preliminary response; and
• Clarification of the claim construction standard as applied to expired patents in AIA proceedings.

Other rule changes under consideration include:

• Adjustments to the scope of additional discovery;
• How to handle multiple proceedings before the Office involving the same patent;
• Use of live testimony at oral hearings;
• Whether the parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation;
• or motions to amend, emphasizing that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be “entered”);
• For amendments to result in the issuance (“patenting”) of amended claims, a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office;
• Changes to the Trial Practice Guide to clarify usage of live testimony and to emphasize the importance of real-party-in-interest discovery; and
• A single-judge pilot program where the single judge would make the decision on whether to institute a trial.

Director Lee’s full blog posting is available at http://www.uspto.gov/blog/.

For up-to-date information on IPR, PGR and CBM Info, visit MBHB’s PTAB TRIALS group on LinkedIn.

Grantland G. Drutchas, a founder and former managing partner of McDonnell Boehnen Hulbert & Berghoff LLP, has more than 20 years of experience in the practice of intellectual property law, with a particular emphasis on litigation, licensing, and client counseling. His trial experience includes both jury and bench trials. His litigation experience encompasses disciplines ranging from recombinant DNA technology and cell signaling, pharmaceuticals, medical diagnostic instruments, and medical devices to conference phones, lampposts, and injection molds. drutchas@mbhb.com.

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