The USPTO recently announced changes to the rules for trials before the PTAB under the AIA. The announcement, which may be found here, indicates that the changes will be implemented via a series of rule packages using a three-part roll-out plan, with the first rule package being effective as of March 27, 2015, and the second and third rule packages being rolled-out at later dates that have yet to be determined.
According to the announcement, the first rule package contains “‘quick fixes’ – changes of simple scope that will immediately improve the trial proceedings.” These “quick fixes” include increasing the page limit from 15 pages to 25 pages for petitioner’s reply briefs, and increasing the page limit from 15 pages to 25 pages and adding a claims appendix for motions to amend. The announcement indicates that “judges will begin implementing [these “quick fixes”] through scheduling orders effective immediately.”
A second proposed-rule package is expected to be issued later this summer and will contain more involved changes to the PTAB trial rules governing conduct of the AIA trial proceedings. The announcement indicates that the second proposed-rule package may include “further modifications to the motion to amend process; adjustments to the evidence that can be provided in the patent owner’s preliminary response; and clarification of the claim construction standard as applied to expired patents in AIA proceeding.”
With respect to the further changes to motions to amend, the second proposed-rule package contemplates “changes to emphasize that a motion for a substitutionary amendments will always be allowed to come before the Board for consideration (i.e., be ‘entered’),” and “for the amendment to result in the issuance . . . 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.” However, the announcement notes that “the duty of candor and good faith [that] requires the patent owner to make of record any additional prior art material to patentability known by the patent owner” is still applicable. The proposed changes to be implemented as part of the second proposed-rule change will be announced for comment prior to implementation.
Additional changes are being contemplated with respect to the Trial Practice Guide, including changes to “bring greater clarity” to the usage of live testimony, and to “emphasize the availability of live testimony upon the grant of any such motion for live testimony, except where not suitable.” With regard to the changes to the Trial Practice Guide, the announcement also indicates that the changes will “emphasize the importance of [real-party-in-interest] discovery as to determinations of standing and as to the possible later estoppel consequences.”
Finally, the announcement indicates that a pilot program is being considered. Under the pilot program, “a single judge would make the decision on whether to institute a trial,” and “[t]wo new judges would be added to the panel only when and if a trial is instituted.” Although not specified in the announcement, it may be assumed that the changes to the Trial Practice Guide and the implementation of the pilot program would be part of the third rule package.