2020-10131: PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence

Summary

The United States Patent and Trademark Office ("USPTO" or "Office") proposes changes to the rules of practice for instituting review on all challenged claims or none in inter partes review ("IPR"), post-grant review ("PGR"), and the transitional program for covered business method patents ("CBM") proceedings before the Patent Trial and Appeal Board ("PTAB" or "Board") in accordance with SAS Institute Inc. v. Iancu ("SAS"). Consistent with SAS, the Office also proposes changes to the rules of practice for instituting a review on all grounds of unpatentability for the challenged claims that are asserted in a petition. Additionally, the Office proposes changes to the rules to conform to the current standard practice of providing sur-replies to principal briefs and providing that a patent owner response and reply may respond to a decision on institution. The Office further proposes a change to eliminate the presumption that a genuine issue of material fact created by the patent owner's testimonial evidence filed with a preliminary response will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a review.

The agency’s own summary, as published.

What this changes

Amends 1 part of the Code of Federal Regulations — the standing rules this notice rewrites.

• 37 CFR 42 Trial Practice Before the Patent Trial and Appeal Board