Amendments to the PTAB Rules of Practice

April 13, 2016

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On April 1, 2016, the USPTO published final amendments to the Rules of Practice for PTAB AIA trials.  The amendments are effective May 2, 2016, and apply to all AIA petitions, whether they were filed before, on or after the effective date.  Highlights include:

1)  37 C.F.R. § 42.11:  The amended rules require that every paper be signed and that the signature complies with the signature requirements set forth in 37 C.F.R. § 10.18(a).  The act of presenting a paper to the PTAB will be considered a certification as set forth in 37 C.F.R. § 10.18(b).  Under rule 10.18(b), the party presenting a paper certifies that all statements made are believed to be true and that the party shall be subject to criminal penalties for any knowingly and willfully false statements or representations.  The amended rules allow the PTAB to impose sanctions on an attorney that violates this rule and provides a procedure for the opposing party to file a motion for sanctions.

2)  37 C.F.R. § 42.24:  The maximum length of Petitions, Patent Owner Preliminary Responses, Patent Owner Responses, and Petitioner replies to Patent Owner Responses will be based on word count, instead of page length. For example, the maximum length of a Petition for Inter-Parties Review will be 14,000 words instead of 60 pages.  This change will allow Petitioners and Patent Owners to freely include figures without concern for approaching the maximum length and to add arguments to claim charts without receiving a notice to correct defects.

3)  37 C.F.R. § 42.100 and 200:  If a party certifies that the reviewed patent will expire within 18 months from the entry of a notice of filing date, the party may request a “district-court” type claim construction instead of a claim construction based on the Broadest Reasonable Construction.  This is consistent with the PTAB’s current practice in which a district-court” type claim construction is used when the patent will expire before the PTAB issues a Final Written Decision.

4)  37 C.F.R. § 42.107 and 108: A Patent Owner Preliminary Response will be able include supporting evidence.  However, the PTAB’s Institution Decision will view evidence in the Patent Owner Preliminary Response “in the light most favorable to the practitioner.”  Current practice requires a Patent Owner to ask the PTAB for permission to include evidence in their Preliminary Response (most often requested with respect to the Real Party-In-Interest issues).

The amended rules also allow the Petitioner to seek leave to file a Reply to the Patent Owner Preliminary Response upon a showing of good cause.  Petitioners have been able to ask the PTAB for permission to submit a Reply for good cause, but there has not been a corresponding rule.

Click on link to view USPTO’s Amendments to the PTAB Rules of Practice


John Bird


John M. Bird is a partner in the Washington, DC Office of Sughrue Mion PLLC. His focus is on the ‎protection and enforcement of designs and a wide range of electrical and mechanical technologies, ‎including analytical/measurement systems, medical ‎devices, HVAC systems, printers/copiers, ‎telecommunications systems, ‎data recording mediums, semiconductor fabrication, bearings, ‎welding ‎processes, sports equipment, footwear, and various automobile ‎components, such as tires, ‎transmissions, engines, fuel-injection systems, ‎motors, lamps, steering systems, connectors/wiring, ‎valves, and ‎control/monitoring systems. ‎

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