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As anticipated in the previous edition of this newsletter, the USPTO recently released details of its projected rule changes for 2015 in response to written comments. In a USPTO blog post, Director Michelle K. Lee announced three rounds of rulemakings, provided hints as to what each round would include, and listed changes that would take effect immediately.

According to the announcement, judges will immediately implement increases in the page limits for motions to amend and for petitioners’ reply briefs from 15 pages to 25 pages and the respective opposition and reply briefing will receive a proportionate increase in pages numbers. Motions to amend will also be allowed a claims appendix. Director Lee stated that more “quick fixes” will be released this spring as part of the first round of rulemakings, but she was silent as to what these changes will include. 

The second round of revisions is expected to address several issues, including the following:

  • Further modifications to the motion to amend process;
  • Adjustments to the evidence that can be provided in the patent owner preliminary response;
  • Clarification of the claim construction standard as applied to expired patents in AIA proceedings;
  • Adjustments to the scope of additional discovery;
  • How to handle multiple proceedings before the Office involving the same patent;
  • Use of live testimony at oral hearings;
  • Whether the parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation; and,
  • Emphasizing that a motion for a substitutionary amendment will always be allowed to be entered, and for the amendment to result in the issuance of the amended claims, without requiring the patent owner to make a prior art representation as to the narrowed amended claim beyond the art of record before the Office.

Because the second rulemaking package will be issued in the form of a proposed rule, an opportunity for public feedback will be allowed before the rules are finalized.

The third round of changes will update and refine the Office Patent Trial Practice Guide. According to Director Lee, the changes will emphasize the availability and clarify the use of live testimony at hearings, emphasize the importance of real-party-in-interest discovery to continue the Board’s recent trend of increasingly granting motions for such discovery, and possibly institute a single-judge pilot program for institution decisions. Regarding the pilot program, for a select number of cases, only one judge would determine whether to institute a trial. If trial is instituted, two additional judges would join the first judge on the panel to provide a fresh look at the issues. The goal is to increase efficiency and objectivity in the proceedings, and if the results are favorable, the program may become standard procedure.

If you have questions or need more information, please contact Meredith Elkins or Justin Allen.

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