MPEP Q & A 210: What is the Executive Summary of the Supplement ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board?

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Question:

What is the executive summary of the PDF titled ‘Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board’?

Answer:

This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for IPR, PGR, CBM, and derivation proceedings that implemented provisions of the AIA providing for trials before the Office. These include:

  • Allowing new testimonial evidence to be submitted with a patent owner’s preliminary response
  • Adding a Rule 11-type certification for papers filed in a proceeding
  • Allowing a claim construction approach that emulates the approach used by a district court following Phillips v. AWH Corp. (hereinafter ‘‘a Phillips-type or district court-type construction approach’’) for claims of patents that will expire before entry of a final written decision
  • Replacing the current page limit with a word count limit for major briefing

Chapter Details:

This question comes from the following supplement “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”. This is a special supplement that at the time of this recording is currently being tested on the Patent Bar exam. Depending on future changes to the supplement and the MPEP, the question and answer may not be applicable.

Section Summary:

This question comes from the following supplement: “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board”.

Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board

This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (‘‘IPR’’), post-grant review (‘‘PGR’’), the transitional program for covered business method patents (‘‘CBM’’), and derivation proceedings that implemented provisions of the Leahy Smith America Invents Act (‘‘AIA’’) providing for trials before the Office.