A recent blog post by USPTO Director Michelle Lee has garnered the attention of the patent bar – and rightfully so.1 Under Lee’s leadership, the USPTO is showing a genuine willingness to change and adapt the rules governing America Invents Act (“AIA”) trials before the Patent Trial and Appeal Board (“PTAB”). In the span of less than one year, the USPTO is implementing changes and proposing others based on written comments by stakeholders, including patentees, industry and special interest groups, law firms and individuals.2 Only 37 comments were submitted; however, this process has initiated a variety of potential changes.3
The changes and potential changes discussed by Director Lee are broken down into three groups.
1. The “quick fix” package. Effective immediately via scheduling orders issued by PTAB judges, the page limit for (1) motions to amend claims, and (2) petitioner’s reply briefs will be increased from 15 to 25. Additionally, claims in a motion to amend may now be placed in an appendix, freeing up additional pages within the brief.
2. The “proposed rule” package. “Later this summer,” the USPTO will propose a set of rules and seek additional feedback before finalizing. Director Lee’s blog post provides little detail on most of the proposed changes, except for one – amendments to claims. This change would “more noticeably limit the burden on the patent owner” by only requiring the patent owner to show patentability over prior art of record when proposing a claim amendment.4
The other potential changes that the USPTO is “considering” are described more generally as:
- Further modifications to the motion to amend process
- “Adjustments” to evidence available for a patent owner preliminary response
- Clarification of the claim construction standard as applied to expired patents
- Adjusting the scope of additional discovery
- Handling multiple proceedings involving the same patent
- Updates on the use of live testimony at oral hearings
- Guidance on whether or not parties should be required to make a certification with their filings (similar to Rule 11 certification in district courts)
3. Updates to the Trial Practice Guide (TPG). Director Lee proposes several changes to trial practice that could impact the conduct and outcome of AIA trials. First, an increased emphasis may be placed on the availability of live testimony, which to date has been underused. Second, the TPG may be updated to make discovery into real-party-in-interest more available. Finally, in response to some concerns over bias, the USPTO may conduct a pilot program where one judge makes a decision on whether to institute a trial, and only then is joined by two new judges to conduct the trial itself. The motivation for such a change is that the two additional judges would not have any potential bias from the original decision to institute a trial.
Two points stand out the most from Director Lee’s blog post. First, the USPTO is taking feedback seriously. The opportunity to participate in the initial round of open feedback is over. However, interested parties would be wise to pay careful attention to the USPTO’s proposals this summer, and to be very vocal in providing feedback regarding these potential changes.
Second, the tide may be turning in favor of patent owners. Up until now, the AIA trial program has been criticized by some as being unfairly biased against patent owners. Since the AIA trials began, 36% of claims for which a trial has been instituted have been found unpatentable.5 Another 15% of instituted claims have been cancelled or disclaimed.6 However, the proposed changes, particularly the ones aimed at making the claim amendment process easier, may start to shift these numbers in favor of preserving more claims, albeit with potential amendments.
- Posting of USPTO Director Michelle Lee to Director’s Forum: A Blog from USPTO’s Leadership, http://uspto.gov/blog/ (Mar. 27, 2015, 10:18 EST).
- Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, http://www.uspto.gov/page/comments-trial-proceedings-under-america-invents-act-patent-trial-and-appeal-board (last visited April 2, 2015).
- Currently, a patent owner is required to show patentability over both prior art of record, and additionally over art not of record but known to the patent owner.
- Inter Partes Review Statistics, http://www.uspto.gov/sites/default/files/documents/inter_partes_review_petitions_terminated_to_date%2001%2015%202015.pdf (last visited April 2, 2015).