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The Intellectual Property StrategistFeaturesIntellectual PropertyLitigationPatent Litigation

What You Need to Know About the USPTO's Proposed Rule Changes to PTAB Trials

By Kerry S. Taylor and Nathanael R. Luman
July 01, 2020

On May 27, 2020 the U.S. Patent and Trademark Office (USPTO) proposed rule changes to govern inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review proceedings at the Patent Trial and Appeal Board (PTAB). The most significant proposal would eliminate the presumption that a genuine issue of material fact created by testimonial evidence filed with a patent owner preliminary response would be viewed in the light most favorable to petitioner when deciding to institute a review. Adoption of this rule could encourage more patent owners to file declarations with their preliminary responses, and may ultimately result in decreasing petitioner success rates in obtaining institution of review. The other changes would simply conform the rules to current USPTO practices, and are therefore less noteworthy. Below is a summary of each proposed rule change and its potential impact on PTAB practice.

Rule Change #1: Removing the requirement to view a genuine issue of material fact created by testimonial evidence filed with a patent owner preliminary response in the light most favorable to petitioner for purposes of institution.

The rule change of most import would remove the current presumption that a genuine issue of material fact created by testimonial evidence (such as an expert or inventor declaration) filed with a patent owner preliminary response would be viewed in the light most favorable to the petitioner for purposes of deciding to institute a review. Under the amended rule, the Board would consider the totality of all the evidence on even ground when determining whether a petitioner has met the applicable standard for institution.

The original 2012 rules did not allow a patent owner to submit testimonial evidence with its preliminary response. The current rule came into effect in 2016, and allows testimonial evidence to be submitted with a patent owner's preliminary response, with the caveat that any genuine issue of material fact created by such evidence is viewed in the light most favorable to the petitioner for purposes of institution. See, 37 C.F.R. §§42.108(c) and 42.208(c). The USPTO's description of this proposed rule change states that it believe the current rule should be amended due to concerns over patent owners being discouraged from filing testimonial evidence with preliminary responses. See, 85 FR 31728, 31729-30 (May 27, 2020).

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