NPRM to Codify Existing Practices with Notable Exception

The United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking today to update its rules to conform to SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).  That is, the rules now follow the holding of SAS to institute an AIA trial proceeding on all challenged claims should the petitioner meet its burden for at least one challenged claim.  Additional include other rule based updates to codify practices introduced by changes to the Trial Practice Guide, such as providing for sur-replies to principal briefs and providing that a patent owner response and reply may respond to a decision on institution.

None of the above rules change existing practices, but the USPTO did offer one notable wrinkle in its Federal Register Notice.
Continue Reading PTAB Proposes New Rule Package – and New Preliminary Proceeding Philosophy