This Thursday May 16th, from noon to 1 p.m. ET, the USPTO will conduct its latest “Boardside Chat.” This week’s program will provide an overview of two recently published notices of proposed rulemaking impacting the the PTAB.
The wait is finally over! (no not Taylor Swift’s new album…think nerdier….like way nerdier)
Last Friday the USPTO finally released its Notice of Proposed Rulemaking (NPRM) directed to Patent Trial & Appeal Board Practices (here) a year after its overly-ambitious Advanced NPRM (ANPRM) was released. While readers of this blog already knew what was going to be in the NPRM, the release of the NPRM at least confirms that the agency still intends to move something forward in the waning months of the Vidal administration. Whether the agency will get anything over the finish line in time is far from clear.
The NPRM is most noteworthy for what it does not include — every underdeveloped/legislative idea of the ANPRM. But that was entirely predictable. Perhaps more concerning is the absence of a codification of current Fintiv 314(a) practices. Such discretionary denial practices exploded under the previous Director only to be reined in under Director Vidal via a guidance memo. This ping-pong action will continue across administrations unless and until regulations are issued. The next Director will almost certainly reinvigorate Fintiv practices regardless of election outcome (more on that later this week)
As to the content of the NPRM itself, some marginal value and an oddly misguided option that hurts Patent Owners and risks derailing the entire proposal.Continue Reading Limited PTAB Rule Proposal Marred by Ill Conceived Briefing Changes
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