Exploring the Impact of the Latest Patent Trial and Appeal Board Rules on Petitioners and Patent Owners

The USPTO has released the long-awaited Notice of Proposed Rulemaking ("NPR") that proposes modifications to the IPR and PGR rules for (i) briefing discretionary denial issues, (ii) 325(d) Considerations, (iii) instituting parallel and serial petitions, and (iv) terminating these proceedings after a settlement agreement.  The NPR codifies most of the precedential Board decisions relating to discretionary denials, however, it does not address or mention the factors relating to co-pending litigation. 

1. The NPRM contains multiple proposals pertaining to discretionary denials

1. Proposes that discretionary denial issues are briefed separately from the Patent Owner's Preliminary Response (POPR).
2. Proposes definitions for serial and parallel petitions, and factors for evaluating when discretionary denial may be appropriate for them.
3. Proposes a framework for evaluating discretionary denial based on previously presented art or arguments (i.e., discretionary denial under 35 U.S.C. § 325(d)).
4. Proposes that discretionary denial arguments regarding parallel petitions or Section 325(d) will not be considered for joinder petitions if such issues were already addressed in the context of the instituted petition.

2. The NPRM proposes that pre-institution and post-institution settlement agreements must be filed with the USPTO.

This program, presented by Lissi Mojica, will provide you with an in-depth review of the notice and how it may affect the current process.

Learning Objectives:

1. Review the ramifications of the proposed rules
2. Navigate the discretionary denial process in light of the new rules
3. Examine 35 USC 325 (D) with respect to previously presented prior art or arguments
4. Discuss the submission of the settlement agreement and the rationale for submitting it
5. Analyze what is not in the new rules package - the status of where the PTAB  is on discretionary denials in proceedings that have co-pending litigation