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

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).