USPTO: PTAB Rules Revised By Jennifer J. Jedra

The U.S. Patent and Trademark Office (USPTO) on August 20, 2015, published proposed revisions to the rules for proceedings before the Patent Trial and Appeal Board. 80 Fed. Reg. 50720, 8/20/2015. Following the “quick fix” amendments issued earlier this year, these proposals address the duty of candor, word count limitations for briefing, and supportive evidence in a patent owner’s preliminary response to an Inter Partes Review (IPR) petition.


Last March, USPTO Director Michelle Lee previewed in a blog a variety of amendments to the rules for proceedings before the Patent Trial and Appeal Board (PTAB). She announced a roll-out plan that would begin with quick fixes, such as an increase in page limits for certain briefing and permission to use a claims appendix; those revisions were issued as final rules last May. See 80 Fed. Reg. 28561, 5/19/2015.

On August 19, Director Lee described the next part of the plan in her blog, previewing proposed rules to be published in the Federal Register on the following day. In addition, she provided some statistical information on the PTAB’s performance and work load. “Although the total number of petitions filed to date reflects around three times more than what we initially anticipated, we are especially pleased that the PTAB has nonetheless maintained a perfect record in rendering all its final decisions within the mandated time frame of one year,” she wrote.

Director Lee acknowledged that there is room for improvement and cited the proposed revisions to the rules as a step in that direction.

Proposed Revisions

1. Duty of Candor

The most extensive revision in the proposed amendments is to 37 CFR §42.11 on the duty of candor. The provision is expanded with details on the requirements of signing petitions, the effect of representations to the Board, and the availability of an “appropriate sanction” for violations of the rules. The rule requires Board authorization to file a motion for sanctions and written notice to the other party before a request for authorization, stating the basis for the proposed motion.

On the nature of the sanction, the rule says it “must be limited to what suffices to deter repetition of the conduct or comparable conduct by others similarly situated and should be consistent with §42.12,” the provision detailing the sanctions authorized. The proposed rule indicates that the sanction does not apply to disclosures and discovery requests, responses, and objections.

2. Page Limits

The proposal revises the limits on certain briefs to measures of words rather than pages. Thus, instead of a 60 page-limit on IPR and derivation petitions, the limit would be 14,000 words; instead of an 80-page limit on PGR and CBM petitions, the limit would be 18,700 words. The rules would require that the submitted briefing include a certification of compliance with the word or page count.

3. Other Revisions

Oral argument, §42.70(b): the requirement that demonstrative evidence be submitted five days before oral argument is changed to seven days.

Claim construction, §§42.100(b), 42.200(b), and 42.300(b): the provisions on claim construction for IPR, PGR, and CBM proceedings are clarified to say that the broadest reasonable construction does not apply to patents that will expire before the final written decision is issued. In proceedings involving such patents, the district court claim construction standard applies.

Preliminary response to petition, §§42.107(a) and 42.207(a): the provisions for IPRs and PGRs are clarified to permit the inclusion of supporting evidence; §42.107(c) prohibiting new evidence in the preliminary response is stricken.

Institution of IPRs, §§42.108(c) and 42.208(c): supporting evidence offered in the patent owner’s preliminary response to IPR and PGR petitions on disputed material facts will be viewed in the light most favorable to the petitioner in the decision to institute a proceeding, and the petitioner may seek leave to reply.

Beyond the proposed amendments for specific rules, the Federal Register notice responds to public comment on the particular questions posed in the June 2014 notice.  Among other things, the Office explains that the PTAB is developing motions-to-amend practice through its own body of decisions. It also reports that the Office Patent Trial Practice Guide will be revised later to reflect practice developments on how the Office handles additional discovery, live testimony, and confidential information.

To read the Federal Register notice, click here.

Your Patent Attorney can advise you on how the revised PTAB rules will likely affect your Patent(s).