USPTO Announces Proposed Rules for AIA Trials

In her blog , USPTO Director Michelle Lee described potential changes to the AIA trial rules to be introduced in proposed rules beginning this spring.

The first “quick fix” proposed rules are expected to be released this spring and include increasing page limits for a patent owner’s motion to amend from 15 to 25 pages (with a commensurate amount of additional pages for the opposition and reply briefing).  The proposals will also provide for a claims appendix and increase of the page limit for a petitioner’s reply brief to 25 pages. Although these quick fix proposed rules have not yet been issued, they will take effect immediately through PTAB scheduling orders.

Additional proposed rules to be issued in the summer may also address more substantive issues.  For example, the USPTO is considering a proposed rule to relax the burden for amending claims.  Currently, a patent owner must establish that a proposed replacement claim in a motion to amend is patentable over the prior art that is in the record, as well as prior art that is not in the record but is known to the patent owner.  This has been a difficult burden for patent owners to meet. Under a proposed rule change that the USPTO is considering, the patent owner will only be required to establish that the amended claims are patentable over prior art that is part of the record.

As part of the summer-issued proposed rules, the USPTO is contemplating making discovery regarding the petitioner’s requirement to identify real parties in interest easier.  The PTAB has denied petitions for failing to properly identify a real party in interest. So it can be an important basis upon which a patent owner can challenge a petition.  Currently, the PTAB does not necessarily permit discovery about the identity of the interested parties in the petition.  And such information is often something patent owners cannot figure out without discovery.

The USPTO is also considering launching a pilot program where only one judge of the three-judge panel will decide whether the petitioner has met the burden to institute a review, and then the remaining two judges will join the trial, if initiated, to conduct the full review.  This program is intended to address the perception that PTAB judges deciding the reviews may be biased towards unpatentability once they have already determined that the petitioner has met the burden to institute the trial.