Changes Under Consideration to Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings Before the Patent Trial and Appeal Board

Issuing agencies

Abstract

The United States Patent and Trademark Office (USPTO or Office) is considering modifications to the rules of practice for inter partes review (IPR) and post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB or Board) to better align the practices with the USPTO's mission to promote and protect innovation and investment in the same, and with the congressional intent behind the American Invents Act (AIA) to provide a less-expensive alternative to district court litigation to resolve certain patentability issues while also protecting against patentee harassment. The USPTO is considering promulgating rules the Director, and by delegation the Board, will use to exercise the Director's discretion to institute IPRs and PGRs; to provide a procedure for separate briefing on discretionary denial that will allow parties to address relevant issues for discretionary denial without encroaching on the pages they are afforded to address the merits of a case; to provide petitioners the ability to pay additional fees for a higher word-count limit; and to clarify that all settlement agreements, including pre-institution settlement agreements, are required to be filed with the Board.