Friday Mar 27, 2015
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`PTAB’S Quick-Fixes for AIA Rules Are to Be Implemented Immediately
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`Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO
`Michelle K. Lee
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`In recent appearances before the Technology Policy Institute (link is external) and the IPO
`Education Foundation’s PTO Day, I highlighted the popularity (at least based upon number of
`filings) of our Patent Trial and Appeal Board (PTAB) America Invents Act (AIA) trials over the
`last three years. I also promised a series of rulemakings later this year so we could seek public
`input on how we could make these proceedings even better. We are well along in the process of
`issuing our first set of rules and I want to give you a hint now of what is to come.
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`The USPTO issued rules and guidance for the new AIA proceedings in 2012. Despite best
`efforts, we never envisioned that our rules or guidance would be perfect at the outset, but instead
`anticipated making refinements along the way. In June 2014 we asked for your input on how
`these proceedings were working. I am pleased to tell you about the feedback we collected and
`how that feedback is shaping the direction of our AIA trials going forward.
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`In response to our request for input, we received 37 written comments. Members of the Board
`have carefully reviewed your thoughtful comments about ways that we can improve the AIA
`proceedings. To implement some of the changes spurred by your input we have devised a three-
`part roll-out plan.
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`This spring we plan to issue a first rule package containing what we call "quick fixes"—changes
`of simple scope that will immediately improve the trial proceedings. Later this summer, we will
`issue a second proposed-rule package containing more involved changes to our Patent Trial and
`Appeal Board Trial Rules that govern the conduct of the AIA trial proceedings. We also plan to
`modify our Trial Practice Guide that provides guidance to the public concerning various aspects
`of PTAB practices in AIA trial proceedings. The Trial Practice Guide advises the public on the
`general framework of the rules, including the structure and times for taking action in AIA trial
`proceedings. These modifications will clarify our trial operations and by implementing the roll-
`out in stages, we aim to bring improvements to our proceedings as quickly as possible.
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`As to our first “quick fix” rule package, I wish to highlight some of the improvements you can
`expect to see. Many of you advised us that fifteen pages for a motion to amend that includes a
`claim listing is not sufficient to explain adequately why the amended claims are patentable.
`Similarly, others noted that fifteen pages for a petitioner’s reply brief is not a commensurate
`number of pages to respond to a patent owner’s response. We have heard you, and we agree. One
`of our quick-fix changes will nearly double the number of pages for a motion to amend, granting
`up to twenty-five pages for the motion along with the addition of a claims appendix (with a
`commensurate amount of additional pages for the opposition and reply briefing). Another change
`will nearly double the number of pages for a petitioner’s reply brief, granting up to twenty-five
`pages. Notably, even before these two changes appear in the first rule package, judges will begin
`implementing them through scheduling orders effective immediately.
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`As to our second rule package of more involved changes, we are considering proposing a number
`of other revisions to rules including: further modifications to the motion to amend process;
`adjustments to the evidence that can be provided in the patent owner preliminary response; and
`clarification of the claim construction standard as applied to expired patents in AIA proceedings.
`We also are considering several other changes, including adjustments to the scope of additional
`discovery, how to handle multiple proceedings before the Office involving the same patent, use
`of live testimony at oral hearings, and whether the parties should be required to make a
`certification with their filings similar to a Rule 11 certification in district court litigation.
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`Additionally, regarding motions to amend, we are contemplating proposed changes to emphasize
`that a motion for a substitutionary amendment will always be allowed to come before the Board
`for consideration (i.e., be “entered”), and for the amendment to result in the issuance
`(“patenting”) of amended claims, a patent owner will not be required to make a prior art
`representation as to the patentability of the narrowed amended claims beyond the art of record
`before the Office. Of course, the duty of candor and good faith requires the patent owner to make
`of record any additional prior art material to patentability known by the patent owner. These
`contemplated changes would be intended to more noticeably limit the burden on the patent
`owner, even though the patent owner is the party moving for the change in the patent.
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`As with the revisions we are making via the first rule package, the changes being considered in
`our second rule package are the direct results of your feedback. And because we plan to issue the
`changes in the second rule package in the form of a proposed rule, you will have an additional
`opportunity to give your feedback before we finalize them.
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`As to our Trial Practice Guide, we are contemplating proposing even more updates and
`refinements. Although we are not prepared to change the scheduling order to specify that live
`testimony will automatically be allowed at a hearing, we will address the subject of live
`testimony to bring greater clarity to its usage. Specifically, because there has not yet been a
`current practice of denying motions for live testimony and we do not want to diminish the
`possibility of live testimony, we plan to emphasize the availability of live testimony upon the
`grant of any such motion for live testimony, except where not suitable.
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`Further, we understand that the existence of ample discovery to establish the real-party-in-
`interest (RPI) of the petitioner has been a concern. And we want to be sure that the availability of
`appropriate RPI evidence does not pose a problem for patent owners. While the Board
`increasingly has been granting motions for such discovery, we plan to update the Trial Practice
`Guide to emphasize the importance of RPI discovery as to determinations of standing and as to
`possible later estoppel consequences.
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`Lastly, to the extent that there has been concern that the judges participating in a decision to
`institute a trial may not be completely objective in the trial phase, we are considering developing
`a single-judge pilot program for institution. Under this pilot, a single judge would make the
`decision on whether to institute a trial. Two new judges would be added to the panel only when
`and if a trial is instituted. In the interest of efficiency, the first judge would remain on the panel;
`but in the interest of having “fresh eyes,” the two additional judges would not have participated
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`in the matter prior to institution. After running this pilot for a select number of cases, we would
`study the results to determine the approach to follow in the future.
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`In closing, we appreciate your input on our AIA trial proceedings thus far. Our intention is to
`continue this iterative approach of seeking your input after this round of changes has been in
`effect for some time. We are committed to fulfilling our Congressional mandate to provide a
`quick, inexpensive alternative to district court litigation and improve patent quality and to
`ensuring that the AIA trials are as effective and fair as possible. And we can do so only by
`regularly monitoring and correcting our course as usage of our AIA trials evolves in time.
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`Posted at 10:18AM Mar 27, 2015 in ip | Comments[0]
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