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New Patent Rules for AIA Proceedings

Will new patent rules
Help owners defend their claims
Against challenges?

A blog post by Michelle K. Lee on March 27, 2015, Under Secretary of Commerce for Intellectual Property and Director of the US Patent and Trademark Office, outlined USPTO’s plans to make life easier for patent owners under the America Invents Act (AIA). The rules for AIA proceedings were first rolled out in 2012. In June of 2014 the USPTO asked for public comments on how to improve the proceedings. Rather surprisingly, given the number of patent owners and patent attorneys in the US, the USPTO received only 37 written comments. The comments came from individual inventors and patent attorneys, from giant corporations like Cisco and IBM, and from organizations like the Electronic Frontier Foundation (EFF) and the American Bar Association.

The USPTO will be rolling out changes in three stages. The first stage, this spring, will include what the USPTO calls “quick fixes” – “changes of simple scope that will immediately improve the trial proceedings.”

These quick fixes will include:

  • Increasing the number of pages for a motion to amend from 15 to 25
  • Increasing the number of pages for reply brief from 15 to 25

In the summer, the USPTO will roll out changes to the Patent Trial and Appeal Board Trial (PTAB) Rules and to the Trial Practice Guide. Changes under consideration include:

  • Adjustments to the scope of additional discovery
  • Changes in how multiple proceedings involving the same patent are handled
  • Use of live testimony at oral hearings
  • Requiring the parties to make a certification with their filings similar to a Rule 11 certification in federal district court cases

The public will have the opportunity to provide feedback before these proposed rules are finalized.

The proposed changes also deal with the issue of identifying the real party in interest in a patent case. As discussed by the EFF,

The term “real party in interest” means the person or entity that would benefit from a lawsuit. Real parties in interest should be disclosed to the Patent Office, so a defendant knows who is behind a lawsuit. Patent trolls often hide behind shell companies, and this shell game allows the actual parties who benefit from settlements to remain secret the whole time.

According to Lee,

Further, we understand that the existence of ample discovery to establish the real-party-in-interest (RPI) of the petitioner has been a concern…. 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.

Finally, in response to “concern that the judges participating in a decision to institute a trial may not be completely objective in the trial phase,” the USPTO is considering a single-judge pilot program. During the pilot, a single judge would decide whether to institute trial and two new judges would be added to the panel only when and if there was a trial.

As we discussed last year, since the advent of the AIA the PTAB has been seen as a “death squad” for patents. These changes may seem minor, but they do appear to benefit patent owners by making it easier for patents to survive the PTAB.

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