On Friday, March 27, Director Lee issued a statement on the PTO Blog, indicating several current and proposed “quick-fix” rule changes. Immediate changes include nearly doubling the number of pages for a motion to amend to up to 25 pages, along with the addition of a claims appendix. Opposition briefing and reply briefing will get a commensurate amount of additional pages. Judges will begin implementing these changes through scheduling orders effective immediately.
Upcoming anticipated rule changes (second “quick-fix” rule changes) include:
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Modifying the motion to amend process;
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Adjustments to the evidence a patent owner can provide in a preliminary response; and
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Clarification of the claim construction standard as applied to expired patents in AIA proceedings.
Other rule changes under consideration include:
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Adjustments to the scope of additional discovery;
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How to handle multiple proceedings before the Office involving the same patent;
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Use of live testimony at oral hearings;
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Whether the parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation;
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or motions to amend, emphasizing that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be “entered”);
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For amendments to result in the issuance (“patenting”) of amended claims, a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office;
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Changes to the Trial Practice Guide to clarify usage of live testimony and to emphasize the importance of real-party-in-interest discovery; and
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A single-judge pilot program where the single judge would make the decision on whether to institute a trial.
Director Lee’s full blog posting is available at http://www.uspto.gov/blog/.
