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USPTO Issues Revisions to PTAB Post Grant Procedure

by | Apr 1, 2016 | Patent | 0 comments

Today, the US PTO issued revisions to the Rules of Procedure for the Patent Trial and Appeal Board, at 81 Fed. Reg. 18750.  This Federal Register Notice includes various changes to the duty of candor, the rules on pleading page limits, as well as grounds for instituting IPR and PGR proceedings. 

Specifically, notable provisions that were revised include:

§ 42.11 on duty of candor, which provides additional detail on signature and representation requirements, as well as adding sanctions for violations for this duty;

§ 42.23(b) on oppositions and replies, which adds that arguments in a “patent owner preliminary response” as content that may be addressed in petitioner’s reply brief;

§ 42.24 on page number limits, which changes the previous IPR 60-page limit to a word limit of 14,000 words; and PGR 80-page limit to a word limit of 18,700 words. Additionally, a variety of matters are also excluded from the word count;

§ 42.100(b) on procedure, which now allows a party to request the district court standard for claim construction for a patent expected to expire 18 months from the petition filing date.

§ 42.108(c) on IPR institution, which fleshes out what is taken into account for a determiniation of “sufficient grounds” of a “reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.” 

For more on this Federal Register Notice, visit https://www.gpo.gov/fdsys/pkg/FR-2016-04-01/pdf/2016-07381.pdf.