Timothy Maier

USPTO Publishes PTAB Rule Changes For Public Comment

The USPTO has published proposed changes to the rules governing proceedings at the PTAB. Comments must be submitted by June 26th to be considered. A majority of the changes conform the rules with current PTAB practices already adopted, while one specific change would represent a diversion from the norm.

First, the proposal would adopt the Supreme Court’s SAS Institute decision changes to institution at the PTAB. In the decision on whether to institute, the Board would be required to choose between instituting on all or none of the grounds for rejection proposed in the petition. As established by the Supreme Court, this rule would prohibit partial institutions.

Second, the proposed rules would allow sur-replies to principal briefs and a response and reply by the patent owner to decision on institution. This rule echoes changes to the Office Trial Practice Guide from August 2018 and aligns the rules with the current practices by the Board in proceedings.

Finally, the proposed changes would revise 37 C.F.R. 42.108(c) and 42.208(c). Currently, the Board’s determination of whether there are sufficient grounds for institution is described as follows:

The Board‘s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.

Under the proposed change, the description would end before granting the presumption in favor of the petitioner. Under the proposal, the rule would instead read:

The Board‘s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence.

Per the notice, the USPTO believes this rule change will ensure that “any testimonial evidence submitted with a patent owner’s preliminary response will be taken into account as part of the totality of the evidence.” This would shift the burden away from the patent owners and likely lead to a lower institution rate at the PTAB.

The PTAB is hosting a Boardside Chat on Thursday June 11 from 12:00 noon until 1:00 PM where they will discuss the proposals.

If you have any questions or concerns about these changes, how they may affect your filings, or are interested in submitting comments and would like assistance, please feel free to reach out to us here.

Category: Firm News, General