The U.S. Patent and Trademark Office Patent Trial and Appeal Board issued a final rule regarding institution, sur replies, and presumptions.
First, the Board changes 37 C.F.R. §§ 42.108 and 42.208 to implement SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) by noting that “the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” And these rules also state “the Board may deny all grounds for unpatentability for all of the challenged claims.” Finally, all presumptions in favor of petitioner for patent owner evidence submitted with a patent owner preliminary response have been removed from the rules.
A final major change is a formalization of the sur reply and its formatting. This can be found in rules §§ 42.23 and 42.24.
This article appeared in the December 2020 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.