USPTO Provides “Cheat Sheet” to Final PTAB Rule Modifications

By Scott McKeown on August 22, 2012

USPTO Publishes Final PTAB Trial Rule “Cheat Sheet”

USPTO Publishes Final PTAB Trial Rule “Cheat Sheet”

The below “cheat sheet” to the final rule changes was published by the USPTO yesterday. Note that the items listed are not exhaustive, but represent most of the major changes.

TABLE 1: Proposed Versus Final Rules for the New Administrative Trials

	Proposed	Final
1	Fees for claims challenged in excess of 20 based on increments of 10 claims IPR fee: 1 to 20 claims – $27,200.00 21 to 30 claims $34,000.00 31 to 40 claims – $40,800.00 41 to 50 claims – $54,400.00 51 to 60 claims – $68,000.00 Additional fee for each additional 10 claims or portion thereof – $27,200.00 PGR fee: 1 to 20 claims – $35,800.00 21 to 30 claims – $44,750.00 31 to 40 claims – $53,700.00 41 to 50 claims – $71,600.00 51 to 60 claims – $89,500.00 Additional fee for each additional 10 claims or portion thereof – $35,800.00	Fees for claims challenged in excess of 20 based on flat per claim fee IPR fee: 1 to 20 claims – $27, 200.00 For each claim in excess of 20 claims – $600.00 PGR fee: 1 to 20 claims – $35,800.00 For each claim in excess of 20 claims – $800.00
2	Page limits more restricted, and statement of material facts included in page count Petition requesting IPR review and opposition: 50 pages Petition requesting PGR review and opposition: 70 pages Petition requesting CBM review and opposition: 70 pages Claim charts must be double-spaced	Page limits increased, and statement of material facts eliminated from page count Petition requesting IPR review and opposition: 60 pages Petition requesting PGR review and opposition: 80 pages Petition requesting CBM review and opposition: 80 pages Claim charts may be single-spaced
3	Board may recognize counsel pro hac vice during a proceeding upon a showing of good cause, subject to conditions as the Board may impose	Same as proposed with the additional specification that lead counsel be a registered practitioner
4	Party may move for additional discovery	Parties may agree to additional discovery between themselves Parties may agree to mandatory discovery requiring initial disclosures
5	Non-cumulative information that is inconsistent with a position advanced by the patent owner or petitioner must be filed as soon as practicable. Party submitting the information must specify the relevance of the information	Eliminate the non-cumulative requirement as well as requirement to explain the relevance of the information that is inconsistent with a position advanced by the party
6	Due date for patent owner response to petition is two months from the date the IPR/PGR review was instituted	Default date for filing a patent owner response is three months from the date the IPR/PGR review was instituted
7	Patent owner preliminary response may not include testimonial evidence but instead only documentary evidence	Patent owner preliminary response may include new testimonial evidence where a party demonstrates that such evidence is in the interests of justice
8	Petitioner may request to file a motion identifying supplemental information relevant to a ground for which the trial has been instituted and that the request must be made within one month of the date the trial is instituted	Party may file a motion to submit supplemental information if the request for authorization to file the motion is made within one month of the date the trial is instituted and the supplemental information must be relevant to a claim for which the trial has been instituted Party seeking to file supplemental information one month after the date the trial is instituted must request authorization to file the motion. Motion must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests of justice
9	Patent owner may file one motion to amend the patent claims but only after conferring with the Board	Patent owner may file an initial amendment without Board authorization but must discuss the amendment in a conference call with the Board prior to filing Additional motion to amend may be authorized when there is a good cause showing (i.e., where supplemental information is belatedly submitted) or a joint request to materially advance settlement
10	Patent owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim to substantially the same invention as the finally refused or cancelled claim; (ii) A claim that could have been filed in response to any properly raised ground of unpatentability for a finally refused or cancelled claim; or (iii) An amendment of a specification or of a drawing that was denied during the trial proceeding.	Modification of (i) to preclude patent owner from obtaining patentably indistinct claims, and elimination of (ii)