The final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (“IPR”), post-grant review (“PGR”), the transitional program for covered business method patents (“CBM”), and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act (“AIA”) providing for trials before the Office.

See for background and Federal Register entry.

On March 31, 2016 the USPTO announced the issuance of new final rules that will, among other things:

Allow patent owners to include, with their opposition to a petition to institute a proceeding, any relevant testimonial evidence, addressing concerns that patent owners are disadvantaged by previous rules that limited the evidence that could be presented with their preliminary response to the petition;

Add a Rule 11-type certification for papers filed in a proceeding;

Clarify that the PTAB will use the claim construction standard used by district courts for patents that will expire during a proceeding and therefore, cannot be amended, while confirming the use of broadest reasonable interpretation (BRI) for all other patents;

Replace the current page limit with a word count limit for major briefings.
Amend its Office Patent Trial Practice Guide to reflect these rule changes and developments in practice concerning how the USPTO handles motions to amend, additional discovery, real party-in-interest, privy issues, and confidential information.

The USPTO announced that it will not continue to go forward with the pilot program that proposed the institution of post grant administrative trials by a single judge.
Rule 11-Type Certification
The Office proposed to amend section 42.11 to include a Rule 11-type certification for papers filed with the Board with a provision for sanctions for noncompliance (seeing the Rule as preventative in nature).

Consistent with Rule 11 of the Federal Rules of Civil Procedures, the new Rule will provide for a 21 day cure period (to correct or withdraw the challenged paper or claim) of the alleged violation, before a motion for sanctions can be filed. Consequently, a motion for sanctions cannot be filed with the Board before the 21 day cure period has expired.

The Office stated its belief that sanctions directed to practitioners and parties are sufficient deterrents; therefore, the new Rule does not include sanctions on law firms.

Extension of One Year Period To Issue a Final Determination
The Office made it clear that it will continue “to strive to meet the one-year statutory time period for trial, and that it does not propose to change the rules pertaining to the one-year pendency from institution-to-decision to provide for specific circumstances under which “good cause” may be shown”. However, the Office will consider suggestions provided in comments in revising the Office Patent Trial Practice Guide to provide examples where good cause may be shown for extension of the one-year period to issue a final determination in an AIA proceeding.

The above represents just a sampling of the rule changes. We would suggest a reading of the entirety of the Final Rules, as published in the Federal Register for a comprehensive understanding of the Final Rules and the application of same in your individual practices.

Dylan Connors

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