USPTO Proposes Changes to AIA Trial Rules

The USPTO has issued a Notice of Proposed Rulemaking with three proposed amendments to the AIA trial rules. The notice is available here.

First, the Office is proposing to amend 37 C.F.R. §§  42.108(a) and 42.208(a) to be consistent with the Supreme Court’s decision in SAS Institute Inc. v. Iancu holding that the former practice of partial institutions was improper. The rules as amended would state that when reviewing an IPR, PGR, or CMB petition, the Board will either (1) institute on all of the challenged claims and on all grounds of unpatentability asserted for each claim, or (2) deny the petition.

The Office is further proposing to amend §§ 42.23, 42.24, 42.120, and 42.220 to permit (1) replies and patent owner responses to issues raised in an institution decision, and (2) sur-replies to principal briefs. These amendments would bring the rules in line with the Office’s current practice.

Finally, the Office proposes to amend the rules to eliminate the presumption in favor of the petitioner for a genuine issue of material fact created by testimonial evidence submitted with a patent owner’s preliminary response when deciding whether to institute an IPR, PGR, or CBM review.

The public may submit comments on the proposed rulemaking to on or before June 26, 2020.