Patent Law Practice Center

New Post Grant Rules Become Effective, No Changes to Motions to Amend

On April 1, 2016, the United States Patent and Trademark Office published final rules in the Federal Register that relate to post grant proceedings. These new final rules went into effect on May 2, 2016, and amend the existing PTAB trial practice rules pertaining to inter partes review (IPR), post grant review (PGR), covered business method (CBM) review, and derivation proceedings brought into being by provisions of the America Invents Act (AIA).

In a nutshell, these new rules change existing practice by allowing new testimonial evidence to be submitted with a patent owner’s preliminary response, adding a Rule 11-type certification for papers filed in a proceeding, allowing a claim construction approach that emulates the approach used by a district court following Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) for claims of patents that will expire before entry of a final written decision, and replacing the current page limit with a word count limit for major briefing. These final rules are the culmination of a process started two years ago. For more information on the changes taking effect, please see Patent Office amends PTAB Trial Practice Rules.

Many had hoped that the Office would make it easier for patent owners to successfully amend patent claims in post grant proceedings, but the Office stood firm.

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USPTO’s New Rules and You

The Patent Law Practice Center wants to be sure that you are ready for the USPTO’s new rules of practice for ex parte appeals before the Board of Patent Appeals & Interferences that become effective on January 23, 2012. PLI’s “USPTO New Rules of Practice for Ex Parte Appeals: Change and Simplification for 2012″ is a one hour briefing on January 9, 2012 that will focus on the new petition practice to toll Reply Briefing deadlines, simplification of brief formatting and required appendices, the new default practices and assumptions, guidelines for identifying “new rejections”, any new jurisdictional timing, and the elimination of examiner responsibilities.

The America Invents Act (AIA) introduces entirely new options, e.g., Post-Grant Review, Inter Partes Review (formerly inter partes patent reexamination) Derivation, a special post-grant review for “business method” patents and Supplemental Examination. Going forward, it is anticipated that the USPTO will become an even more prominent battleground for patent disputes. PLI’s “Post-Grant USPTO Proceedings 2012 – The New Patent Litigation” (February 3, 2012) is taught by a faculty of judges, preeminent lawyers, and industry leaders who have earned national reputations in patent litigation and in post-grant proceedings at the USPTO. The program focuses on the role of post-grant USPTO proceedings as component of a litigation strategy, including pre-trial and post-trial options.  The relative advantages and disadvantages of the various proceedings are explained from both the perspective of the Patentee and Third Party.