Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board
Discussion of Specific Rules 
Subpart A—Trial Practice and Procedure
Claim Construction Standard
The Office amends 37 CFR 42.100(b), 42.200(b), and 42.300(b) as follows:
Amend 37 CFR 42.100(b) to add the phrase ‘‘that will not expire before a final written decision is issued’’ after ‘‘an unexpired patent’’ and add that a party may request a district court-type claim construction approach be applied if a party certifies that the involved patent will expire within 18 months from the entry of the Notice of Filing Date Accorded to Petition.
- The request must be accompanied by a party’s certification, and be made in the form of a motion under § 42.20, within 30 days from the filing of the petition.
Amend 37 CFR 42.200(b) to add the phrase ‘‘that will not expire before a final written decision is issued’’ after ‘‘an unexpired patent’’ and add that a party may request a district court-type claim construction approach be applied if a party certifies that the involved patent will expire within 18 months from the entry of the Notice of Filing Date Accorded to Petition.
- The request must be accompanied by a party’s certification, and be made in the form of a motion under § 42.20, within 30 days from the filing of the petition.
Amend 37 CFR 42.300(b) to add the phrase ‘‘that will not expire before a final written decision is issued’’ after ‘‘an unexpired patent’’ and add that a party may request a district court-type claim construction approach be applied if a party certifies that the involved patent will expire within 18 months from the entry of Notice of Filing Date Accorded to Petition.
- The request must be accompanied by a party’s certification, and be made in the form of a motion under § 42.20, within 30 days from the filing of the petition.
Patent Owner Preliminary Response
The Office amends 37 CFR 42.23(b) by: Substituting ‘‘opposition, patent owner preliminary response, or patent owner response’’ for ‘‘opposition or patent owner response.’’
The Office amends 37 CFR 42.107(a) to indicate that a preliminary response filed by the patent owner is subject to the word count under § 42.24, rather than a page limit.
- The Office amends 37 CFR 42.107 to delete paragraph (c).
The Office revises 37 CFR 42.108(c) to indicate that the Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, 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 an inter partes review.
- A petitioner may seek leave to file a reply to the preliminary response, but any such request must make a showing of good cause.
The Office revises 37 CFR 42.207(a) to indicate that a preliminary response filed by the patent owner is subject to the word count under § 42.24, rather than a page limit.
- The Office amends 37 CFR 42.207 to delete paragraph (c).
The Office revises 37 CFR 42.208(c) to indicate that during post-grant reviews, the Board’s decision will take into account a patent owner preliminary rkesponse where such a response is filed, including any testimonial evidence, 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 a post grant review.
- A petitioner may file a reply to the preliminary response, but any such response must make a showing of good cause.
Oral Hearing
The Office amends 37 CFR 42.70(b) to require at least seven, not just five, days before oral argument for exchange of exhibits.
Word Count
The Office amends 37 CFR 42.24 to implement a word count limitation for petitions, patent owner preliminary responses, patent owner responses, and petitioner’s replies, by:
- Adding ‘‘Type-volume or’’ to the title;
- adding ‘‘word counts or’’ before ‘‘page limits’’; adding ‘‘word count or’’ before ‘‘page limit’’; adding ‘‘grounds for standing under §§ 42.104, 42.204, or 42.304, mandatory notices under § 42.8,’’ after ‘‘a table of authorities,’’ and adding ‘‘or word count’’ after ‘‘a certificate of service’’ in paragraph (a)(1);
- substituting ‘‘14,000 words’’ for ‘‘60 pages’’ in (a)(1)(i) and (a)(1)(iv);
- substituting ‘‘18,700 words’’ for ‘‘80 pages’’ in (a)(1)(ii) and (a)(1)(iii);
- substituting ‘‘word counts’’ for the first three instances of ‘‘page limits’’ and ‘‘word count’’ for the two instances of ‘‘page limit’’ in paragraph (a)(2), and adding ‘‘word counts or’’ before ‘‘page limits’’ in the last sentence;
- adding ‘‘word counts or’’ before the ‘‘page limits’’ in paragraph (b);
- substituting ‘‘word counts’’ for the two instances of ‘‘page limits’’ in paragraph (b)(1);
- substituting ‘‘word counts’’ for the two instances of ‘‘page limits’’ in paragraph (b)(2);
- adding ‘‘word counts or’’ before the two instances of ‘‘page limits’’ and adding ‘‘or word count’’ after ‘‘a certificate of service’’ in paragraph (c);
- substituting ‘‘5,600 words’’ for ‘‘25 pages’’ in paragraph (c)(1);
- adding a new paragraph that implements a requirement for a certification, stating the number of words, for any paper whose length is specified by type-volume limits.
Rule 11-Type Certification
The Office amends 37 CFR 42.11 to add ‘‘signing papers; representations to the Board; sanctions’’ to the title of the section, to designate existing text as paragraph (a) and to add a subheading to that paragraph, and to add new paragraphs that implement a signature requirement, as set forth in Rule 11.18(a), for every petition, response, written motion, and other paper filed in a proceeding; provide the representations that an attorney, registered practitioner, or unrepresented party makes when presenting to the Board a petition, response, written motion, or other paper; and set forth the process and conditions under which the Board will impose sanctions if the Board determines that § 41.11(c) has been violated.
Rulemaking Considerations
This final rule revises the consolidated set of rules relating to Office trial practice for inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings.
- The changes being adopted in this notice do not change the substantive criteria of patentability.
- These changes involve rules of agency practice. These rules are procedural and/or interpretive rules.
