United States: USPTO Issues Scaled-Down Revised Rules For PTAB Trials

On April 1, 2016, the U.S. Patent and Trademark Office published final rules modifying some procedures used in AIA trials before the Patent Trial and Appeal Board (PTAB). The revised rules arise from comments received from practitioners over the last two years that existing PTAB procedures put patent owners at a tactical disadvantage. The new rules make some notable changes to some PTAB trial procedures, but not to other procedures criticized by some AIA trial participants.


The Leahy-Smith America Invents Act (AIA) created three new post-grant proceedings permitting competitors and other members of the public to challenge the validity of issued patents in trial-like administrative proceedings. One of the review procedures, Inter Partes Review ("IPR"), has proven to be unexpectedly popular with challengers, with nearly 4,200 petitions filed through the end of February 2016. In 2014, the USPTO invited feedback on improvements to the AIA trial process, including a June 2014 formal request for public input. The USPTO responded to public comments on March 27, 2015 by announcing new "quick-fix" improvements to the PTAB rules, including expanding page limits for some briefs. In addition, USPTO Director Michelle Lee announced that the USPTO was considering numerous other changes to AIA trial procedures, and invited further public comment on those proposals.

The USPTO now has had an opportunity to compile and evaluate all public comments on the proposed rules, and published final amended rules in the Federal Register. 81 Fed. Reg. 18750 (April 1, 2016).

Significant Rule Changes:

The USPTO has finalized a number of significant rule changes effective May 2, 2016 for all new proceedings commenced on or after that date, and proceedings pending on or after that date. These changes include:

  • Patent Owner's Preliminary Response. The USPTO has amended 37 C.F.R. § 42.23(b) to permit a patent owner to include testimonial evidence in a response to a petition for IPR, Post-Grant Review, or Covered Business Method review. A petitioner may seek leave to file a reply responding to the submission upon a showing of good cause. If the petition and preliminary response create a genuine issue of fact, the PTAB will view the evidence in the light most favorable to the petitioner "solely for purposes of deciding whether to institute" review. The USPTO will place "no negative inference on patent owner's choice to forgo an opportunity to file a preliminary response, [and] no negative inference will be drawn if a patent owner decides not to present new testimonial evidence with a preliminary response." 81 Fed. Reg. at 18755.
  • "Broadest Reasonable Interpretation" Claim Construction. Prior to the current change, the AIA rules allowed use of Phillips-based claim construction analysis, rather than the USPTO's administrative "broadest reasonable interpretation" or "BRI" claim construction, only if the AIA challenge involved an already expired patent. The USPTO now has amended the AIA trial rules to expand the use of a Phillips-based claim construction analysis to situations where a patent will expire during an AIA challenge. According to the current rule change, either party may request the Phillips-based review by filing a motion certifying that the patent will expire within the pendency of the AIA challenge. The PTAB will then schedule a conference call with both parties to determine whether a Phillips-based claim construction is appropriate. This rule change comes amidst ongoing discussions that having a BRI standard for AIA challenges and Phillips-based claim construction analysis in federal court may result in disparate claim constructions for the same patent. In response to those practitioners critical of the two standards, the USPTO maintained that a patent owner has a reasonable opportunity to amend claims in AIA trial proceedings, and as a result BRI is the appropriate claim construction standard in most trials. The Supreme Court will hear arguments on April 25 in Cuozzo Speed Techs. LLC. v. Lee, 136 S. Ct. 890 (2016), addressing the propriety of BRI review in AIA trials, and the outcome of that case may affect future PTAB claim construction practices.
  • Fed. R. Civ. P. Rule 11-Type Certifications. The USPTO has amended 37 C.F.R. § 42.11 to require practitioners to include a certification consistent with Rule 11 on papers filed with the PTAB. The PTAB is authorized to impose sanctions for violation of the rule.

Changes Considered, But Not Implemented:

One notable aspect of the finalized USPTO rules is what they do not cover. In her March 27, 2015 blog post, Director Lee published a wide range of potentially significant procedural changes. For various reasons, however, the USPTO ultimately decided not to revise the rules more extensively at this time, generally preferring to allow the PTAB to consider the issues on a case-by-case basis.

  • "Single-Judge Pilot Program." The USPTO decided not to go forward with a proposed pilot program in which a single PTAB judge would determine whether to institute a trial at the petition stage of proceedings. Under the proposal, if a trial was initiated, two additional judges would be added to the panel hearing the case on the merits. The proposal was suggested to mitigate the perception that a PTAB panel that decides to institute review is predisposed to cancelling claims on the merits.
  • Reform of Rules Governing Claim Amendments. After considerable discussion, the USPTO declined to revise the current procedures for amending claims during the AIA trial, despite the fact that motions to amend are rarely granted. The USPTO reiterated that the PTAB panel is not equipped to examine the patentability of proposed amended claims, and thus amended claims automatically become part of the patent under review. As a result, the current rules requiring a patent owner to demonstrate that a proposed amended claim is patentable over the prior art "account[s] for the absence of an independent examination by the Office where a prior art search is performed as would be done during prosecution of a patent application, reexamination, or reissue." 81 Fed. Reg. at 18754.
  • Expanded Availability of Discovery. The USPTO declined to modify the current relatively restrictive standard for allowing discovery. See Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012–00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26) (informative). The USPTO noted that requests for discovery would be considered on a case-by-case basis.
  • Other Procedural Reforms. The final rules do not include new rules governing how the PTAB should process multiple proceedings involving the same patent, and the use of live testimony at trial. In both instances, the USPTO noted that PTAB panels would continue to manage those issues on a case-by-case basis.

Finally, the USPTO noted that it intends to continue to respond to public comments and modify PTAB procedures in the future. "The Office anticipates that it will continue to refine the rules governing AIA trials to continue to ensure fairness and efficiency while meeting all congressional mandates. Therefore, the Office continues to encourage comments concerning how the rules may be refined to achieve this goal." 81 Fed. Reg. at 18751.

Practical Significance:

Perhaps the most significant rule change in the USPTO's current final rule changes is the ability of patent owners to submit testimonial evidence, such as expert declarations, in their preliminary response to a petition for AIA review. Since a significant percentage of initiated challenges result in a final decision that some or all of the challenged claims are unpatentable, the patent owner's best opportunity for avoiding an adverse result is to avoid institution of review. The opportunity to submit testimonial evidence, particularly expert testimony, may be helpful in avoiding institution of review in some cases. Even with the possibility of submitting testimony, however, the rules require the PTAB to view factual disputes at the institution stage in a light most favorable to the petitioner. This procedural posture may result in AIA trials even if the patent owner submits testimony and other evidence to rebut the factual basis of a petition.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.