New PTAB rule changes go into effect on May 2, 2016. 81 Fed. Reg. 18,750 (April 1, 2016). This marks the second round of changes since the PTO started soliciting feedback on PTAB trials in April 2014. We reported on the first round of changes in our April 2015 newsletter.
Summary of May 2, 2016 changes:
- The preliminary response may include “new testimonial evidence” (e.g., a newly-drafted expert declaration), which was previously prohibited. Any genuine issues of material fact raised by the evidence will be viewed in favor of the petitioner in deciding whether to institute a proceeding. (to be codified in 37 C.F.R. pt. 42.108(c), 42.208(c)).
- District court-style (i.e., Phillips-style) claim construction will be used if the patent expires within 18 months and if requested by either party. (to be codified in 37 C.F.R. pt. 42.100(b), 42.200(b), 42.300(b)). Otherwise, PTAB will continue to use the broadest reasonable interpretation.
- Rule 11-type certification will be added to PTAB trials (based on Rule 11 from the Federal Rules of Civil Procedure). (to be codified in 37 C.F.R. pt. 42.11).
- Word count will replace page limits for the petition, preliminary response, response, and reply brief. (to be codified in 37 C.F.R pt. 32.24).
- Deadline for service of demonstratives changed from at least 5 business days to at least 7 business days before the oral argument. (to be codified in 37 C.F.R. pt 42.70).