PTAB Practice Guide: 2012 vs 2018 | Patent Office Procedures

Patent Office Procedures

The Evolution of Patent Office Practice Guides for AIA Proceedings

The Patent Office introduced its Preliminary Practice Guide (referred to as the “2012 Practice Guide”) alongside the regulations for the newly implemented America Invents Act (AIA) proceedings back in August 2012. These procedures encompassed inter partes review, post-grant review, covered business method review, and determination procedures. Intended to inform practitioners of standard practices, the 2012 Practice Guide aimed to establish consistency among different Patent Trial and Appeal Board (PTAB) panels. It largely mirrored prior practices used in contested proceedings like reexaminations and interferences.

However, after nearly six years of experience with AIA proceedings, shortcomings in the application of the 2012 Practice Guide have become evident. Consequently, the Patent Office has initiated a series of updates, starting with the release of the August 2018 Practice Guide. These updates aim to align the Guide with the Patent Office’s current best practices. Notably, these revisions compile analyses used in existing PTAB decisions, addressing commonly disputed procedural issues.

Key Updates in the August 2018 Practice Guide

1. Emphasis on Expert Testimony (Section I.G.)

The importance of expert testimony in AIA proceedings is highlighted, emphasizing its significance as the primary evidence on critical issues. The update outlines PTAB’s practices regarding experts’ qualifications, types and scopes of testimony, and its weight in decision-making. It emphasizes broad acceptance of expert testimony, directing challenges toward its weight rather than its admissibility.

2. Word Count and Page Limits (Section II.A.3.)

The update reflects the current preference for word counts over page limits in key briefs of AIA proceedings. It advises practitioners to present concise, fact-based arguments with references to supporting evidence. As the PTAB is well-versed in patent law, extensive explanations of legal principles are discouraged unless directly relevant to the case’s facts.

3. Consideration of Non-Exclusive Factors (Section II.D.2.)

Addressing potential abuse by Patent Owners initiating multiple procedures against the same patent, this update echoes factor-based tests issued by PTAB through precedential decisions. It aims to reduce instances of multiple AIA proceedings involving the same issues, thereby lessening the burden on Patent Owners.

4. Sur-Replies to Principal Briefs (Section II.I.)

The update introduces the ability to request sur-replies to principal briefs, specifying dates for such replies in initial scheduling orders. This change significantly affects the finality of arguments, empowering Patent Owners or Applicants to have the last word on crucial briefs or motions.

5. Distinction Between Motions to Bar and Motions to Strike (Section II.K.)

Emphasizing that PTAB generally decides these motions after oral hearings, it clarifies instances where pre-hearing decisions might be considered if issues raised in these motions are unlikely to be resolved or could prejudice a party at the hearing.

6. Procedures for Oral Hearings (Section II.M.)

This section allows Patent Owners to request the final word at oral hearings and permits PTAB to provide guidance on critical issues during pre-hearing meetings, enabling focused arguments given the limited time for oral hearings.

These August 2018 updates aim to enhance the efficiency and fairness of AIA proceedings, providing clearer guidelines for practitioners and reducing ambiguity in PTAB decisions.