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USPTO Issues Final Rules on PTAB Procedure
The U.S. Patent and Trademark Office recently issued three new rules governing practice before the Patent Trial and Appeal Board:
Procedure for Motions to Amend
Effective October 18, 2024, the USPTO has made permanent certain of its provisions under the motion to amend (MTA) pilot program, which was first implemented in 2019. The “Rules Governing Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board” allow a patent owner to request PTAB guidance on a motion to amend and to file a revised MTA. The final rules also clarify that a preponderance of the evidence standard will apply to new grounds for unpatentability raised by the Board, and that the Board may consider all evidence of record in granting or denying an MTA or issuing a new ground for unpatentability.
In a press release accompanying the final rules, USPTO Director Kathi Vidal stated, “Since launching the Motion to Amend Pilot Program in 2019, we have heard from patent owners that it is an efficient and effective way to receive feedback on their amended claims in order to preserve their patent rights. Making the program permanent and revising the burden-allocation rules ensures the USPTO is issuing robust and reliable patents and strengthens the predictability and certainty of post-grant trial proceedings before the PTAB.”
Director Review
Effective October 31, 2024, a party to an America Invents Act proceeding can request review by the Director of the USPTO of a decision on institution, final decision, decision granting rehearing of a decision on institution or a final decision, or other decision concluding an AIA proceeding. The Director also may initiate a review of any such proceeding sua sponte. The new “Rules Governing Director Review of Patent Trial and Appeal Board Decisions” replace interim processes put in place after the 2021 Supreme Court decision in United States v. Arthrex, Inc., 141 S. Ct. 1970, 1986 (2021), which held that the structure of the PTAB violates the Appointments Clause of the Constitution because the decisions of Administrative Patent Judges were not reviewable by the Director.
In response to comments after the proposed rules were released in April 2024, the USPTO expanded the types of proceedings in which Director Review is available. The rules expressly allow Director Review in derivation proceedings, as well as any decision terminating an AIA proceeding, such as termination due to grant of adverse judgment. The USPTO declined to expand Director Review to ex parte examination or reexamination.
Practicing Before the PTAB
Effective November 12, 2024, the USPTO has modified rules regarding representation before the Board in AIA proceedings. The final rule on “Expanding Opportunities To Appear Before the Patent Trial and Appeal Board” allows parties to proceed without backup counsel for good cause; provides a streamlined procedure for pro hac vice admission when an attorney has appeared pro hac vice in another PTAB proceeding; and clarifies that attorneys appearing pro hac vice have a duty to inform the Board if subsequent events render prior representations in a request for appearance inaccurate or incomplete.
The rule stopped short of allowing attorneys who are not registered to practice before the USPTO to appear as lead counsel, but notes that the USPTO “plans to explore a pilot project under which non-registered counsel who are admitted pro hac vice would be permitted to serve as lead counsel in at least some circumstances.”
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