The USPTO on May
a final rule containing amendments to the regulations for
Patent Trial and Appeal Board (PTAB) proceedings.
The changes include increasing the page limit for motions to
amend and the petitioner’s reply brief to 25 pages
from 15, as well as allowing an appendix in motions to
The increases to the page numbers were welcomed by patent
owners, who are frustrated by the limited space effectively
making motions to amend impossible to get. Other changes such
as clarifying that the number of claims in a petition must be
included when calculating fees and making clear that more than
one back-up counsel is allowed are modest.
Calls are being loudly made for much bigger changes to PTAB
proceedings. Two days after the final rule was issued, Engine,
Public Knowledge, Electronic Frontier Foundation and R Street
wrote to Senators Chuck Grassley (below left) and Patrick Leahy
to proclaim support of their PATENT Act. The organisations
noted that conversations were underway about the inter partes
review programme, and suggested some "areas where these
proceedings could be strengthened".
The suggested changes were:
- Lowering petition fees for small and micro entities,
rather than everyone paying $23,000 to institute an IPR.
- Allowing petitioners to file replies, instead of the
situation now that, according to the letter, "unfairly allows
a patent owner to raise new, unexpected arguments that will
- Allowing petitioners the right to appeal, rather than the
old inter partes reexamination system of a petitioner not
being allowed to appeal, which the letter said "creates an
unfair symmetry that should be addressed as it runs directly
contrary to congressional intent in the AIA".
- Allowing petitioners to raise challenges under Section
101 and 112.
- Extending covered business method reviews to cover all
pre-Alice patents instead of completely closing the CBM
programme in 2020.
Some of this sounds
sensible. Allowing lower fees for small and micro entities is
something the USPTO already does for patent filings, for
example. But most of these provisions would horrify patent
owners, who are already unhappy at the degree to which PTAB
proceedings have shifted the balance of power.
For their part, more pro-patent groups are also calling for
wide-ranging adjustments to the PTAB that they believe would
even things up a bit. BIO, for example, said it could not
support any patent litigation such as the PATENT Act "that does
not meaningfully reform the IPR system". PhRMA also said it
"would have to oppose patent legislation that does not include
changes to more fairly balance post-grant proceedings at the
Pro-patent groups prefer the STRONG Patents Act, which
would make sweeping changes to the PTAB. These includes
first amendments being granted as a matter of right,
eliminating the broadest reasonable interpretation standard for
claim construction, including evidence in preliminary responses
with the petitioner able to respond with a reply, mandating
different panels be used for the institution determination and
the actual trial, and not allowing an IPR or PGR if a reissue
or reexamination is pending.
These are radical changes. The STRONG Act is unlikely to go
anywhere but as the letter from Engine, Public Knowledge,
Electronic Frontier Foundation and R Street made clear, the
PTAB is now very squarely a part of discussions about all
The question now is whether Congress has time to pass any
reform this term and to what degree the PTAB gets caught up in
For its part, the USPTO is mulling making further
adjustments. The changes made last week were deemed "quick
fixes" by the Office. It is
considering proposing a number of other revisions to rules
including further modifications to the motion to amend process,
adjustments to the evidence that can be provided in the patent
owner preliminary response, and clarification of the claim
construction standard as applied to expired patents in AIA