USPTO Unveils New Rules On AIA Review Responses, Sanctions
By Ryan Davis
Law360, New York (March 31, 2016, 2:28 PM ET) -- The U.S. Patent and Trademark Office on Thursday finalized a set of new rules for America Invents Act reviews that will take effect in 30 days and allow patent owners to give more robust responses to review petitions and establish sanctions for inadequate pre-filing investigations.
The office’s 71-page Federal Register notice largely adopts rules it had proposed in August and addresses the many comments the office received about the proposal.
The news rules will allow patent owners to include expert declarations and other testimonial evidence in their response to an AIA review petition. The office said it was making the change due to concerns that the current rules, under which patent owners cannot respond to petitioners’ evidence until a trial is instituted, put patent owners at a disadvantage.
The rule comes with a caveat that “if a genuine issue of material fact is created by testimonial evidence, the issue will be resolved in favor of petitioner solely for institution purposes, so that petitioner will have an opportunity to cross-examine the declarant during the trial,” the office said.
The new rules 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.
USPTO Director Michelle Lee said in a blog post when the proposal was announced last year that such a requirement will "give the USPTO a more robust means with which to police misconduct.”
The office said in Thursday's notice that this rule "provides greater detail on the office's expectations for counsel and parties" and provides a procedure for sanction that does not exist in the current rules.
"The office sees the proposed rule as preventative in nature," it said. "Although the office does not expect, based on past experience, that the procedures in the proposed rule will be used often, the deterrent effect of having such a rule has been recognized."
The new rules also state that the 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. The new rules state that either party can request that the board use that standard if the patent will expire within 18 months of the petition. The board will then hold a conference call to discuss how to resolve the motion.
The new rules also establish word counts, rather than page limits, for the petition, patent owner preliminary response, patent owner response, and petitioner’s reply brief. The office said the change will allow for "administrative efficiencies."
Finally, the office said that it has decided not to institute a proposed pilot program under which a single judge, rather than a three-judge panel, would conduct some AIA reviews.
Most of the public comments opposed that plan, the office said, and "taking into account the comments received, the office has decided not to go forward with the proposed pilot program at this time."
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