On August 20, the USPTO published for comment in the Federal Register proposed changes to the rules governing PTAB trials. In general, the proposed amendments address the claim construction standard applied by the Board, evidence that may be included in the patent owner’s response, and a Rule 11-like misconduct standard for practitioners before the PTAB.

With respect to claim construction, the amended rules clarify that the PTAB will use the Broadest Reasonable Construction standard for all cases, except those in which patents will expire before a final written decision is issued, as such expiring claims cannot be amended. In those limited circumstances, the PTAB will use the claim construction standard used by district courts.

Based upon comments received by the USPTO, the proposed amendments would allow the patent owner to file testimonial evidence with its preliminary response. In light of this change, the amended rules also allow the petitioner to seek leave to file a reply to the patent owner preliminary response. Additionally, because there is no right of cross-examination of declarants before institution, any factual dispute that is material to institution will be resolved in favor of the petitioner solely for purposes of making the institution decision. The proposed rule change also converts the length limitation on petitions, patent owner preliminary responses, patent owner responses, and petitioner replies from page limits to word counts and includes requirements for word count certification.

…any factual dispute that is material to institution will be resolved in favor of the petitioner solely for purposes of making the institution decision.

The new rules incorporate a provision allowing attorneys to be sanctioned for failing to conduct an adequate pre-filing investigation, similar to Rule 11 of the Federal Rules of Civil procedure which applies in district court proceedings. Pursuant to the provision, all papers submitted in a proceeding must be signed by at least lead counsel or designated backup counsel or by a party if they are unrepresented. The proposed amendment provides that, by presenting any paper to the Board, the individual submitting the document certifies that the document is not being presented for any improper purpose, the claims, defenses, and legal contentions are warranted by existing law or by a non-frivolous argument for modifying the existing law, that factual contentions have evidentiary support, and that denials of factual contentions are warranted on the evidence. The rule does not apply to disclosures and discovery requests, responses, and objections.

The amended rules also modify the period of time for exchange of exhibits prior to oral argument from five days to at least seven days.

The USPTO declined to make any amendments to the rules regarding a patent owner’s motions to amend, preferring instead to continue to shape its practice through its issued decisions.

The USPTO noted that it intends to make further changes on how the Board handles additional discovery, live testimony, and confidential information and requests input on recognizing attorney-client privilege for communications between a patent applicant or owner and its U.S. patent agent of foreign patent practitioner.

Further details of the proposed amendments and responses to the public comments submitted to the USPTO are available in the Federal Register.