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USPTO Rulemaking for Post-Grant Proceedings Open for Public Comments

On May 27, 2020, the U.S. Patent and Trademark Office (“USPTO”) proposed amendments to its rules governing post-grant proceedings, addressing three topics.  First, petitions for post-grant proceedings would require institution of all claims or denial of the petition. Second, patent owners would be permitted to file sur-replies to principal briefs. Third, the rules would eliminate the presumption in favor of the petitioner for a genuine issue of material fact created by testimonial evidence submitted with a patent owner’s preliminary response.

Petitions Are Instituted on All Claims or Denied Entirely

In SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Supreme Court held that the Patent Trial and Appeal Board (“the Board”) must address all claims in the IPR petition if the proceeding is instituted. Shortly after this decision, the USPTO updated its guidance that the Board would institute a trial on all claims and all grounds or deny the petition in IPR, PGR, and CBM proceedings. Some of the proposed rules would codify that guidance by amending 37 C.F.R. §§ 42.108 and 42.208 to require the Board to either institute review on all of the challenged claims and grounds of unpatentability presented in the petition or deny the petition.

Patent Owners May File Sur-replies

The USPTO proposes to amend the rules to allow the patent owner to file sur-replies to the principal briefs. Specifically, 37 C.F.R. § 42.23 would be modified to permit a sur-reply to a reply to a patent owner response or to a reply to an opposition to a motion to amend. A sur-reply would be limited to the same page and word limits as the corresponding reply and could only address arguments raised in the corresponding reply.

Eliminating a Presumption in Favor of Petitioners

The USPTO also proposes an amendment to eliminate the presumption in favor of the petitioner when considering testimonial evidence during the institution decision of IPR, PGR, or CBM proceedings. Instead, the Board will consider the evidence in the context of the applicable standard for institution for the proceeding. The proposed changes to 37 C.F.R. §§ 42.108(c) and 42.208(c) would replace the current rule language creating the presumption, “but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute,” with a more neutral instruction for the Board to consider all the evidence.

These proposed rule changes are available in the federal register (available here). The public may provide comments on the rulemaking until June 26, 2020.