PTAB Proposes Amendments to its Rules of Practice

Author: James D. Stein

Editor: Aaron J. Capron

On Wednesday, the U.S. Patent and Trademark Office (USPTO) released a much-anticipated proposed rule package in response to public feedback, making what it calls “more involved” changes to the rules governing Patent Trial and Appeal Board trial proceedings. 80 Fed. Reg. 50720 (Aug. 20, 2015). Some of the proposed changes may benefit patent owners, like allowing submission of new testimonial evidence before institution and replacing petition page limits with word count limits. The new rules would also expressly define a duty of candor and good faith for all parties and practitioners appearing before the Board. The proposed changes also codify some of the Board’s current practices, such as applying the broadest reasonable interpretation to patent claims that will not expire before a final written decision and requiring the parties to serve demonstratives with more time to work out disputes before oral hearing.

The USPTO is soliciting comments on the proposed rule package until October 19, 2015. A detailed breakdown of the rules can be found as an IP Update on Finnegan’s website.

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