On August 19, 2015, the United States Patent and Trademark Office (“Office”) presented proposed amendments to the rules governing trial practice for inter partes review, post-grant review, transitional post-grant review for covered business method patents, and derivation proceedings under the Leahy-Smith America Invents Act (“AIA”) in a Federal Register Notice (“Notice”). The proposed rule amendments address a variety of subjects from claim construction to new Rule 11-type certification requirements. Notably, the proposed rule amendments would create a more robust preliminary stage, where patent owners can present expert testimony and petitioners can request to file replies before the Office’s institution decision.

Along with the proposed rule amendments, the Office provided extensive responses to comments from the public. In its responses, the Office concluded that its current rules generally provide a workable framework to administer AIA proceedings. The Office declined to adopt rigid rules that would limit the discretion of the Patent Trial and Appeal Board (“Board”) to make decisions on a case-by-case basis.