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

On October 22, 2019, the USPTO published a Federal Register notice proposing changes to the rules of practice for inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patents (“CBM”) (collectively “post-grant trial”) proceedings regarding burdens of persuasion for motions to amend and the patentability of substitute claims.[1]

Specifically, the Federal Register

Given the Patent Trial and Appeal Board’s (“PTAB” or “Board”) reluctance to grant motions to amend claims during AIA post-grant proceedings, patent owners faced with post-grant challenges have attempted to circumvent the challenge of amending claims by filing reissue applications of challenged patents.  By doing so, the patent owner attempts to create two parallel proceedings

A difference between post-grant proceedings (i.e., inter partes review and covered business methods) and its predecessor (i.e., ex parte and inter partes reexaminations) is the ability for parties in post-grant proceedings to settle and request termination of the proceedings.  Both federal statutory authority and USPTO rules govern the nature of settlements