USPTO Director Michelle Lee is in the process of making a series of changes to the Patent Trial & Appeal Board (PTAB). In her comments, Director Lee begins with her wry humor: “In recent appearances … I highlighted the popularity (at least based upon number of filings) of our Patent Trial and Appeal Board (PTAB) America Invents Act (AIA) trials.” PTAB trials have been popular for patent challengers – not so much for patentees.
Although the PTAB is a quasi-judicial body, it also operates at the direction of the USPTO director (who is also a member of the PTAB). Thus, unlike many courts, the PTAB is not self-directed.
Director Lee has explained a set of changes to PTAB AIA Trial proceedings coming in two packages:
This spring we plan to issue a first rule package containing what we call “quick fixes”—changes of simple scope that will immediately improve the trial proceedings. Later this summer, we will issue a second proposed-rule package containing more involved changes to our PTAB Trial Rules that govern the conduct of the AIA trial proceedings.
Regarding the quick-fix package, the PTAB is immediately implementing the following changes:
- Expanding the short 15-page limit on motions to amend claims (that must also explain why the proposed amendment is patentable).
- Expanding the 15-page limit for petitioner’s reply-brief.
In the follow-up rule-package proposal, the PTO is considering:
[F]urther modifications to the motion to amend process; adjustments to the evidence that can be provided in the patent owner preliminary response; and clarification of the claim construction standard as applied to expired patents in AIA proceedings; . . . adjustments to the scope of additional discovery[; . . . joining of] multiple proceedings before the Office involving the same patent; use of live testimony at oral hearings; and [requiring parties to] make a certification with their filings similar to a Rule 11 certification in district court litigation.
Additionally, regarding motions to amend, we are contemplating proposed changes to emphasize that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be “entered”), and for the amendment to result in the issuance (“patenting”) of amended claims, a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office.
One issue that has been raised by some (and is part of the proposed “STRONG patent act”) is the perception that PTAB judges who grant the petition-for-review have already come to a conclusion in the case — giving the patentee an undue uphill battle to win on the trial merits (since it is the same judges who hear the merits). The PTO is going to propose a modified model for a pilot program where a single judge decides the petition and then two additional judges are added for the trial.