Amendments to Rules for Practice Before PTAB, 80 Fed. Reg. 96, 28561-66 (May 19, 2015)

Summary: US PTO published it first "Final Rules" package of amendments to practice before the PTAB, effective May 19, 2015.


Summary of the rule changes follows; the official publication can be found here.

TRIAL PRACTICE AND PROCEDURE

Documents

Rule 42.6(a)(2)(ii) now requires all filed documents to be in 14-point, Times New Roman proportional font, with normal spacing

Counsel

Rule 42.10(a) now clarifies that more than one back-up counsel may be named.

Fees

Rule 42.15(a)(3) requires that in addition to the IPR request fee, there is a $200 fee for requesting review of each claim in excess of 20, including unchallenged claims from which a challenged claim depends.

Rule 42.15(a)(4) requires that an IPR post-institution fee including $400 for each claim in excess of 15, including unchallenged claims from which a challenged claim depends.

Rule 42.15(b)(3) requires that in addition to the CBM request fee, there is a $250 fee for requesting review of each claim in excess of 20, including unchallenged claims from which a challenged claim depends.

Rule 42.15(b)(4) requires that a CBM post-institution fee including $550 for each claim in excess of 15, including unchallenged claims from which a challenged claim depends.

Oppositions and Replies

Rule 42.23(a) requires that an opposition or reply to a document that includes (is required to include) a statement of material fact must in turn include a listing of facts that are admitted, denied, or cannot be admitted or denied.

Page Limits for Petitions, Motions, Oppositions, and Replies

Rule 42.24(a)(1) increases the page limit for motions to 15 pages, and the page limit for motions to amend to 25 pages.

Rule 42.24(c) increases the page limit for replies to Patent Owner Responses to Petition to 25 pages; replies to oppositions to 5 pages; and replies to oppositions to Motions to Amend to 12 pages.

Discovery

Rule 42.51 clarifies that cross examination of affidavit testimony prepared for the proceeding is authorized within such time period as the Board may set.

Taking Testimony

Rule 42.53(c)(2) sets time limits for testimonial discovery (unless otherwise agreed or authorized) to 7 hours for cross-examination, 4 hours for redirect examination, and 2 hours for re-cross examination.

Rule 42.53(f)(7) requires the proponent of testimony discovery to provide a copy of the transcript to all parties and file the same, unless otherwise agreed.

Objections; Motion to Exclude

Rule 42.64(b)(1) requires that any objection to evidence submitted during a preliminary proceeding must be filed in 10 business days of institution of the trial; once trial has been institute, the objections must be filed within 5 business days.

Decisions on Petitions or Motions

Rule 42.71(d) provides that a party dissatisfied with an outcome or order can file a single request for rehearing without prior authorization from the Board.

INTER PARTES REVIEW

Amendment to the Patent

Rule 42.121(b) requires that a motion to amend claims must include a claim listing, which may be contained in an appendix to the motion

POST-GRANT REVIEW

Amendment of the Patent

ule 42.221(b) requires that a motion to amend claims must include a claim listing, which may be contained in an appendix to the motion

TRANSITIONAL PROGRAM FOR COVERED BUSINESS METHOD PATENTS

Procedure; Pendency

Rule 42.300 requires that CBM review proceeding shall be administered to have a pendency of no more than one year, and can be extended by 6 months for good cause by the Chief Administrative Patent Judge

Who May Petition for CBM Review

Rule 42.302(c) provides that a petitioner may not file a petition where, before the date on which the petition is filed, the petitioner or RPI filed a civil action challenging the validity of a claim of the patent.