CALL US: 206.533.3854
CALL US  206.533.3854
AEON Law logo full color transparent

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.

Related Articles

AEON Law Founder Adam Philipp Ranked Among Leading IP Lawyers in Chambers USA Guide

AEON Law founder Adam Philipp is included in this year’s Chambers USA guide of the leading IP attorneys in AEON’s home market of Washington. Based ...
Read More

AEON Law and Founder Adam Philipp Ranked Among World’s Top Patent Professionals in IAM Guide

AEON Law and founder Adam Philipp are recognized in this year’s IAM Patent 1000: The World’s Leading Patent Professionals. Adam was recommended for patent prosecution ...
Read More

Understanding the Dawn Donut Rule for Trademarks

In trademark law, the general rule is that, where two parties seek to use the same trademark in the same geographic area, the earlier (“senior”) ...
Read More

Let's work together.

Contact us to set up a meeting with an attorney or team member.

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.

SECTORS

HIGH
TECHNOLOGY

Artificial Intelligence

Blockchain & Cryptocurrency

Computer Technology & Software

Consumer Electronics

Electrical Devices

MECHANICAL
& PRODUCTS​

Cleantech

Mechanical Devices

Consumer & Retail Products

Hardware & Tools

Toys & Games

LIFE SCIENCES
& CHEMISTRY​

Biotechnology

Chemical Compounds

Digital Health

Healthcare Products

Pharmaceuticals

BRANDING
& CREATIVE​

Books & Publications

Brand Creation

Luxury Products

Photography & Video

Product Design

call us  206.533.3854

SERVICES

PROTECT

DEAL

DEFEND