USPTO issues new rules for post-grant proceedings effective May 2

The U.S. Patent and Trademark Office (PTO) issued amendments to its “Rules of Practice for Trials before the Patent Trial and Appeal Board” for IPR, CBM, and PGR proceedings, which will be effective in all current and future proceedings starting on May 2, 2016. Most notably, these amendments allow a patent owner to submit testimonial evidence—in particular, competing expert testimony—with its preliminary response to a petition for IPR, CBM or PGR.  This is a major shift from past practice, when patent owners were not permitted to submit new testimony before the PTO decided the issue of institution.  Although genuine issues of material fact created by the new testimony are to be resolved in favor of the petitioner in deciding institution, this change could set up a “battle of the experts” and reduce institution rates.

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