Today’s Federal Register Notice provides the long awaited “quick-fix” rule changes. The rules codify the changes announced on Director Lee’s March 27th blog post, which provided for the use of a claim appendix in Motions to Amend, expanded page limits for such Motions, and expanded page limits for Petitioner Replies.
The final rules (here) provide additional ministerial changes to conform the rules to the Office’s established practices in handling AIA proceedings, including:
• expanding petitioner replies to a motion to amend to 12 pages;
• requiring a 14 point, Times New Roman font to ensure readability of briefs;
• clarifying that more than one back-up counsel can be named;
• clarifying how to count dependent claim challenges to calculate filing fees;
• clarifying that providing a statement of material fact by a party is optional;
• clarifying that routine discovery contemplates only cross-examination of affidavit testimony prepared for the proceeding;
• providing that uncompelled direct testimony must be in the form of an affidavit, not a deposition;
• clarify that that motions in limine are not used in AIA practice;
• requiring that that objections to evidence should be made part of the record by filing them;
• clarifying that only a single request for rehearing may be filed as of right;
• clarifying, that consistent with the AIA, that CBMs may be extended in the case of joinder; and
• clarifying that CBM petitions may not be filed if the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the covered business method patent.
As stated previously, more substantive changes to the rules and Trial Practice Guide are expected in late 2015.