April Fools Rules: The Final PTAB rules

The United States Patent and Trademark Office has issued the final Patent Trial and Appeal Board (PTAB) rules. Some of the notable changes include modifications away from page-limits towards a total word count limit. The office noticed that there was some perceived gamesmanship occurring with page formatting. The total word count limit brings a petition for an Inter partes review to 14,000 words rather than 60 pages and a petitions for post grant reviews and business methods to 18,700 words rather than 80 pages. Additionally, a certification must be attached that the filing is compliant. These limits are more or less on parity with the Federal Rules of Appellate Procedure for the Federal Circuit (appellant’s principal brief is acceptable if it contains no more than 14,000 words). The office does not expect these changes to materially affect filings.

Perhaps one of the most significant changes comes from the office’s desire to streamline the petition process and not have “trials within trials.” The Office revises 37 CFR 42.108(c) to indicate that where “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.” The Office revised 37 CFR 42.208(c) for a post grant review to the same effect. These rules sound eerily opposite of the long-standing rules for summary judgement in which the court will view facts in the light most favorable to the non-moving party. The office has formally endorsed the presumption that any alleged fact by a petitioner is believed or assumed correct during the institution phase. This may likely lead to even higher rates of institutions and further compounding of the uncertain impact these trials have on the United States patent system and research and development more generally.

A decision to institute a proceeding before the Office should be given a more serious review because the stakes are incredibly high. In situations where opposing parties have equally believable material evidence the statutory requirement of a “more likely than not” likelihood of invalidation of at least claim requirement of Post-Grant Review may not actually be satisfied by the Office’s new presumptory standard. The standard in an Inter-Partes Review of a “reasonable likelihood” may tolerate the new presumptory standard somewhat better yet it is still problematic. The unreviewability provisions of the Office’s decision to institute a trial may be shielding the Office from making rules that are in its favor at the expense of patent owners. While it is commendable that the Office has flawlessly adhered to the one year statutory deadline for every inter partes and post grant decision to date some of the new rules appear to be self-serving. The Office’s desire to prevent “trials within trials” at the institution phase and the statutory requirement for speedy disposition of cases may be subjecting property owners to unjustifiable risks at the expense of actual justice and procedural due-process.

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