Proposed PTAB Changes Aim to Increase Balance

Lori A. Gordon discusses with Managing IP the USPTO’s proposed changes to the rules governing PTAB proceedings. The proposals follow a series of “quick fixes” finalized in May 2015, and include: allowing patent owners to respond to a petition to institute a proceeding with testimonial evidence; a more robust means with which to police misconduct; and clarifying the claim construction standards, among other proposals.

Discussing the proposal allowing the opportunity for the patent owner to use testimonial evidence in preliminary responses and for the petitioner to reply if the patent owner opts to use testimonial evidence, Ms. Gordon told Managing IP, the Board “has set the stage for a more balanced and effective pre-institution process. As a result, instituted trials should be more narrowly focused on the real disputes, and the trails themselves should be more cost effective for both sides.”

Ms. Gordon also noted the oft-overlooked importance of the proposed rule on duty of candour, telling Managing IP, “Another important message the Board seems to be sending to practitioners is in their proposed modifications to the rule related to the duty of candour. The Board greatly expanded the rule related to duty of candour and provided clear guidance on representations made each time a paper is filed by a party. And, the Board directly tied sanctions to violation of these representations. This introduces a higher level of accountability to both practitioners and their clients.”