Amster Rothstein and Ebenstein, LLP - Intellectual Property Law

ARE Patent Law Alert:

USPTO Issues a Final Rule to Amend the Rules of Practice for Trials Before the Patent Trial and Appeal Board

April 1, 2016
Author(s): Charles R. Macedo

On April 1, 2016, the U.S. Patent and Trademark Office (“USPTO”) published a final rule in the Federal Register to amend the existing rules of trial practice before the Patent Trial and Appeal Board (PTAB). 

The final rule will take effect on Monday, May 2, 2016, and it will apply to all petitions for post-grant proceedings (e.g., inter partes review (IPR), post-grant review (PGR), transitional program for covered business method patents (CBM)) filed on or after May 2, 2016 and to any ongoing preliminary proceeding or trial before the PTAB.

The final rule includes the following notable revisions to the PTAB trial practice:

New Testimonial Evidence with Patent Owner’s Preliminary Response:

District Court-Type Claim Construction Standard Applied to Patent Expiring Before a Final Written Decision:

Word Count Limits for Major Briefings:

Rule 11-Type Certification:

Service of Demonstrative Exhibits:

Please feel free to contact us if you would like further information regarding the upcoming changes in the PTAB trial practice rules.


Charles R. Macedo is the author of The Corporate Insider’s Guide to U.S. Patent Practice, and is a partner at Amster, Rothstein & Ebenstein LLP. Jung S. Hahm is senior counsel and William M. Frank is an associate at Amster, Rothstein & Ebenstein LLP.  Messrs. Macedo and Hahm are also the authors of Understanding PTAB Trials: Key Milestones in IPR, PGR and CBM Proceedings, Practical Law, October 14, 2014.  Their practice specializes in intellectual property issues including practice before the Patent Trial and Appeal Board.  They may be reached at [email protected], [email protected], and [email protected].

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