View Rule
View EO 12866 Meetings | Printer-Friendly Version Download RIN Data in XML |
DOC/PTO | RIN: 0651-AD40 | Publication ID: Spring 2020 |
Title: 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 | |
Abstract:
The United States Patent and Trademark Office ("USPTO” or "Office”) 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, 138 S. Ct. 1348 (2018). In light of SAS, the Office 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. |
|
Agency: Department of Commerce(DOC) | Priority: Substantive, Nonsignificant |
RIN Status: Previously published in the Unified Agenda | Agenda Stage of Rulemaking: Proposed Rule Stage |
Major: No | Unfunded Mandates: No |
EO 13771 Designation: Not subject to, not significant | |
CFR Citation: 37 CFR 42 | |
Legal Authority: 35 U.S.C. 2(b)(2), 6,21, 23, 41, 135, 311, 312, 316, and 321-326 Pub. L. 112-29, 125 Stat. 284 Pub. L. 112-274, 126 Stat. 2456 |
Legal Deadline:
None |
|||||||||||||||
Timetable:
|
Regulatory Flexibility Analysis Required: No | Government Levels Affected: None |
Small Entities Affected: No | Federalism: No |
Included in the Regulatory Plan: No | |
RIN Data Printed in the FR: No | |
Agency Contact: Scott Weidenfeller Vice Chief Administrative Patent Judge Department of Commerce Patent and Trademark Office 600 Dulany Street, Alexandria, VA 22313 Phone:571 272-9797 Fax:571 273-9797 Email: scott.weidenfeller@uspto.gov |