USPTO announces notice of proposed rulemaking to change AIA trial rules on institution and responsive briefing

by John Roberts on May 26, 2020

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Patent Trial and Appeal Board

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USPTO announces notice of proposed rulemaking to change AIA trial rules on institution and responsive briefing
The United States Patent and Trademark Office (USPTO) has issued a notice of proposed rulemaking to amend the rules of practice in view of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). The proposed rule provides that if the Board institutes inter partes review, post-grant review, or transitional program for covered business method patents proceedings, trial will proceed on all challenged claims and on all grounds of unpatentability.

The USPTO further proposes changes to the rules to conform to the current standard practice of providing sur-replies to principal briefs and providing that a patent owner response and reply may respond to a decision on institution.

Additionally, the USPTO proposes a change to eliminate the presumption that a genuine issue of material fact created by patent owner’s testimonial evidence filed with a preliminary response will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a review. Thus, consistent with the statutory framework, any testimonial evidence will be taken into account as part of the totality of the evidence.

The full text of the notice is available for inspection at the PTABNPRM2020 within 30 days from the notice of publication.

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