Insights: Alerts Rule Changes for Post Grant Practice

The Patent Office has decided to make several rule changes that will be unveiled in three phases, as announced by Commissioner Michele Lee said in a March 27, 2015 blog post: http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for .

The immediate rule changes announced increase the page limits for motions to amend and reply briefs from 15 to 25 pages.

The additional rules being considered would address the following:

  • Modifications to the motion to amend process
  • Adjustments to the allowable evidence in the patent owner preliminary response
  • Clarification of the claim construction standard as applied to expired patents
  • Adjustments to the scope of additional discovery
  • How to handle multiple proceedings involving the same patent
  • Use of live testimony at oral hearing
  • A rule 11 type certification for filings
  • No need for prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office.
  • Discovery re the real-party-in-interest (RPI)
  • Pilot program with single judge to decide institution, then 2 additional judges added

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