May 19, 2015

PTAB Finalizes “Quick Fix” Changes to IPR/PGR Procedure

By Matthew L. Cutler, Principal

The PTAB issued its revised IPR Rules today, finalizing the “quick fix” changes it forecasted in late-March. There are numerous changes that have been made to IPR practice, many of them ministerial in nature. We focus here on the four most significant changes contained in this rule set:

1. Changes to Page Limits in Patent Owner’s Motion to Amend. The requirements for a Patent Owner Motion to Amend have been changed such that the motion may now be up to 25 pages in length (up from 15 pages). An opposition to a Motion to Amend now has a 25-page limit, too. Also, it is no longer a requirement that the amended claims be set forth as part of the motion itself, eating into the page limit. Instead, the proposed amended claims may be presented as a claims appendix and the listing is not subject to the 25-page limit.

2. Changes to Petitioner Reply Brief Page Limit.  The page limit for a Petitioner Reply Brief has been extended to 25 pages (from 15 pages). In the past, it had been difficult to respond to a full 60-page Patent Owner Response brief in merely 15 pages.

3. Required Font Changes. Parties must use Times New Roman font in all PTAB filings from this point forward. The type of font to be used in filings to the Board had been fairly open-ended in the original rules. Over the course of a 60-page brief, though, one type of compliant font might result in a brief that is up to several pages shorter than other compliant fonts. Those fonts were, however, difficult to read at times. More uniformity, through the use of Times New Roman, will address this issue.

4. Multiple Back-Up Counsel Allowed. The IPR/PGR Rules as initially enacted, seemed to suggest that only one back-up counsel was allowed. In practice, the Board never limited the parties to merely one counsel and this amendment codifies that practice.

The other, less significant changes to the Rules can be reviewed in the 6-page notice published today in the Federal Register.