USPTO Issues 2nd Round Of AIA Rule Changes

By Ryan Davis

Law360, New York (August 19, 2015, 12:31 PM ET) -- The U.S. Patent and Trademark Office on Wednesday announced a new round of proposed changes to the rules for America Invents Act reviews that would let patent owners give more robust responses to petitions and impose new requirements to crack down on misconduct in filings.
In a blog post on the agency's website, USPTO Director Michelle Lee said that the proposed rules would allow patent owners to include expert declarations and other testimonial evidence in their response to an AIA review petition. That change comes in response to concern that patent owners are put at a disadvantage by current rules, under which patent owners cannot respond to petitioners’ evidence until a trial is instituted.

The new rules would also impose a requirement on practitioners before the Patent Trial and Appeal Board akin to Rule 11 in district court, under which attorneys can be sanctioned for not doing an adequate pre-filing investigation. That will "give the USPTO a more robust means with which to police misconduct," Lee said.

"We recognize that, while we believe the proceedings are working well, there are improvements that could be made based on our and the public's experiences with the proceedings," Lee said. "Along with the PTAB's refinement and improvement of its proceedings that it has made through specific decisions, today's proposed rules represent the next step in making improvements to these proceedings."

The new rules follow an initial round of changes in March, in which the USPTO increased the page limits for some AIA review filings. At the time, the office said more substantial proposed rules would be released during the summer.

Tuesday's proposed rules also includes provisions that Lee said will clarify existing PTAB practices.

The proposed rules emphasize that the Patent Trial and Appeal Board will continue to use the so-called broadest reasonable interpretation standard to construe the claims of patents in AIA reviews, with the exception of cases where the patent at issue will expire during the review and cannot be amended.

In such cases, the board will use same claim construction standard used in district courts, but the USPTO said it is seeking public comments about how this rule should be implemented.

For instance, the petitioner in such cases could be allowed to determine, before filing a petition, which claim construction standard should be used, or the board could get briefing about the proper standard to be used in the proceeding.

The office also said that the PTAB will continue to modify its rules and practices regarding when patents can be amended during AIA reviews though its own body of decisions, such as a recent decision that made it easier to amend claims.

Lee said that public comments about the proposed rules will be accepted until Oct. 19.

The office will also soon request public comment about how PTAB panels should be staffed. Since there has been a large and growing number of AIA review petitions being filed, the office is "seeking sensible ways to proactively manage its operations and resources by making these proceedings more efficient," Lee said.

Lee's blog post also included statistics about the number of petitions that have been filed since AIA review proceedings became available in September 2012. There have been a total of 3,655 petitions filed to date in the three separate AIA review programs.

The petitions include 3,277 for inter partes review, in which 1,389 trials have been instituted: 368 for covered business method patent review, for which 185 trials have been instituted, and 10 for post-grant review, for which two trials have been instituted.

In inter partes reviews, 25 percent of the claims that are actually challenged in the petitioner have been found to be unpatentable, Lee said. Only 12 percent of the total claims available to be challenged have been found unpatentable, while the rest were either not challenged, upheld as patentable, canceled or resolved by settlement.

--Editing by Rebecca Flanagan.