May 28, 2020by Element IP

PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence

The USPTO proposes changes to the rules of practice for instituting review on all challenged claims or none in inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), and the transitional program for covered business method patents (‘‘CBM’’) proceedings before the Patent Trial and Appeal Board (‘‘PTAB’’ or ‘‘Board’’) in accordance with SAS Institute Inc. v. Iancu (‘‘SAS’’). Consistent with SAS, the USPTO also proposes changes to the rules of practice for instituting a review on all grounds of unpatentability for the challenged claims that are asserted in a petition.

Additionally, the Office proposes changes to the rules to conform to the current standard practice of providing sur-replies to principal briefs and providing that a patent owner response and reply may respond to a decision on institution. The Office further proposes a change to eliminate the presumption that a genuine issue of material fact created by the patent owner’s testimonial evidence filed with a preliminary response will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a review.

Read the full press release on the USPTO website.

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by Element IP

Element IP is a premier boutique intellectual property law firm. Created specifically to service the needs of users of the US patent system, our firm combines extensive experience in patent procurement, counselling, licensing, post-grant proceedings, and litigation with innovative technology and staffing solutions to provide clients with high quality work product in a cost-effective and efficient manner.