The NPRM introduces a significant procedural change by creating a separate briefing process for discretionary denials in post-grant trials, streamlining the current practice where petitioners must reserve space for addressing these issues in their petition or and patent owner in their POPR. The proposed rule allows for a more structured approach, eliminating the need for petitioners to request a reply to the POPR.

Under the new rule, patent owners can submit a 10-page request within two months of the notice granting a filing date, followed by a 10-page petitioner opposition due within one month of the request. The patent owner can then reply with a five-page response within two weeks of the petitioner's opposition. Additionally, the Board may bring up discretionary denial issues sua sponte.

It's essential to note that the separate briefing process does not allow for merits briefing, focusing solely on addressing discretionary denial issues efficiently. This change aims to formalize the currently ad hoc process and separate requests related to discretionary denial issues from substantive argument, as well as bring these topics to the Board's attention earlier in the process, benefiting both petitioners and patent owners involved in the proceedings.

The PTAB Bar Association with be discussion this NPRM in a webinar on June 12 at 10 am PT/1 pm ET. Register here: PTAB Bar Webinar Registration - Zoom Link

The most significant change to existing practice in the NPRM is the creation of separate, pre-institution briefing on discretionary denial issues. Under current rules, petitioners and patent owners may spend significant portions of their available word count in the petition or POPR to address discretionary denial issues. The NPRM would create a separate briefing procedure so that the parties may address discretionary denial issues outside the petition or POPR.

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