The USPTO has proposed changes to the rules governing PTAB Trial Proceedings in an August 19, 2015 blog post by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee. Director Lee noted that the AIA created three new post-issuance review proceedings in 2011, which the PTAB practice rules govern: inter partes review (IPR); post-grant review (PGR); and the transitional post-grant review for covered business method patents (CBM).
Director Lee summarized the proposed rule changes as follows:
• Proposes to allow patent owners to include, with their opposition to a petition to institute a proceeding, new testimonial evidence such as expert declaration. This change responds to commentary raising concerns that patent owners are disadvantaged by current rules that let petitioners’ evidence go unanswered before a trial is instituted.
• Proposes a new requirement on practitioners before the PTAB, akin to the Rule 11 requirements in federal courts, to give the USPTO a more robust means with which to police misconduct.
• Proposes to clarify that the PTAB will use the claim construction standard used by district courts for patents that will expire during proceedings and therefore cannot be amended, while confirming the use of broadest reasonable interpretation (BRI) for all other cases.
• Notes the PTAB’s development of motions-to-amend practice through its own body of decisions, including a recent decision that clarified what prior art a patent owner must address to meet its burden of proof.
• Addresses comments made about requests for additional discovery, live testimony, and confidential information.
Comments to the USPTO's proposed rules may be submitted on or before October 19, 2015.
In connection with the proposed rule changes, Director Lee also noted the following data regarding the activity at the PTAB:
• As of July 31, 2015, the PTAB has received a total of 3,655 petitions, of which 3,277 are IPRs, 368 are CBMs, and 10 are PGRs.
• Of all of the AIA petitions filed so far, 63 percent were filed in the electrical/computer technology centers (TCs), 23 percent in the mechanical/business methods TCs, 9 percent in the bio/pharma TC, and 5 percent in the chemical TC.
• Trials have been instituted on 1,389 of 3,277 IPR petitions, 185 of 368 CBM petitions, and 2 of 10 PGR petitions.
• Of the first IPRs to reach a conclusion, 12 percent of total claims available to be challenged (4,496 of 38,462), were determined by the PTAB to be unpatentable in a final written decision. Other claims were either not challenged, resolved by settlement, cancelled, or upheld as patentable.Of the first IPRs to reach a conclusion, 25 percent of claims actually challenged (4,496 of 17,675) were found to be unpatentable.