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USPTO Introduces Second Wave of PTAB Rule Changes

On August 20, 2015, the US Patent and Trademark Office ("USPTO") issued a Proposed Rule[1] containing amendments to the Rules of Practice governing proceedings before the Patent Trial and Appeal Board ("PTAB"). This proposed rule introduces a number of changes affecting the proceedings before the PTAB, including inter partes review ("IPR"), post-grant review ("PGR") and covered business methods ("CBM"). The major provisions of the Proposed Rule include clarification of the claim construction standard for PTAB trials, allowance of testimonial evidence submitted with a patent owner's preliminary response, addition of Rule 11-type certification and changes to the word count for major briefing.

This Proposed Rule represents the second set of changes that the USPTO has implemented in an effort to improve PTAB proceedings since its inception on September 16, 2011. Earlier this year, the USPTO released its first set of "quick fixes" following input from the public gathered by the USPTO's listening tour and request for formal comments. This second set of changes contains more involved rule changes. The Proposed Rule remains open for formal public comment until October 19, 2015.

[1] - Proposed Rule is available here.

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