On December 9, 2020, the USPTO released revised rules for AIA trials, which implemented the following four changes:
|
Rules Modified |
Description of Rule Change |
|
42.108 |
No Presumption for Petitioner at Institution: modifications amend the rules to eliminate, when deciding whether to institute an IPR, PGR, or CBM review, the presumption in favor of the petitioner for a genuine issue of material fact created by testimonial evidence submitted with a patent owner's preliminary response. As with all other evidentiary questions at the institution phase, the Board will consider all evidence to determine whether the petitioner has met the applicable standard for institution of the proceeding. |
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42.23 |
Sur-Replies: sur-replies are provided for by rule and the word limit for such sur-replies is 5,600 words, the same as a reply brief. |
|
42.23 |
Responding to a Decision on Institution: petitioner replies and patent owner responses may respond to a decision on institution. |
|
42.108 |
All or Nothing Institution: under the amended rules, the Board will either institute review on all of the challenged claims and grounds of unpatentability presented in the petition or deny the entire petition. |
These modified rules will apply to all petitions filed on or after January 9, 2021. Largely, these rule changes codify the current practices of the Board, such as the Board policy after the Supreme Court's April 2018 decision in SAS v. Iancu to institute on all grounds and all claims when granting institution. Further, the rule changes codify the guidance in the Trial Practice Guide providing for sur-reply briefs.
Unlike most of these rule modifications that comport with current Board practice, however, the change to eliminate the presumption in favor of Petitioner is contrary to current rules. The current rules provided that “a genuine issue of material fact created by [Patent Owner] testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” 37 C.F.R. §§ 42.108, 42.208. Accordingly, the new rule change eliminating this presumption may impact whether Patent Owners decide to provide testimony prior to institution.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
