TAKEAWAY: Upcoming rule changes could make certain aspects of AIA post-grant proceedings more patent-owner friendly.
On March 27, 2015, USPTO Director Michelle Lee published a post on the agency’s blog outlining a series of upcoming changes to the rules governing USPTO post-grant proceedings created by the AIA. A first “quick-fix” rule package is expected to issue this spring. Two of the upcoming rule changes will officially increase page limits for motions to amend and for petitioner reply briefs, although PTAB judges will begin implementing the page limit changes immediately.
In late summer 2015, the USPTO expects to issue a proposed rule package with more involved changes on a variety of topics, including on the motion to amend process. On motions to amend, the USPTO may remove the current requirement for a patent owner to represent patentability of the amended claims beyond the art of record before the Office. The USPTO further plans to update its Trial Practice Guide to emphasize, among other topics, the importance of real party-in-interest discovery as to determinations of standing and possible later estoppel consequences.
Prior to Director Lee’s announcement, many had expressed concern to the USPTO about the difficulty of amending claims during an AIA proceeding. This discussion is often tied to use of the broadest reasonable interpretation (BRI) claim construction standard, since one justification for using this standard in AIA proceedings, as opposed to the district court standard, is that patent owners have the ability to amend their claims during the proceeding. The increased page limit for motions to amend and the proposal to ease the burden on patent owners to show the patentability of amended claims may help patent owners survive an AIA proceeding with issued claims. Finally, an increase in the availability of real party-in-interest discovery may help ensure that the information necessary to answer standing and estoppel questions is available to patent owners.