Meeting of the Minds

A First Look at the Impact of Recent Rule Changes on Patent Owner Preliminary Responses

By Paromita Chatterjee, Arvind Jairam, and Dinesh N. Melwani

©2017. Published in Landslide, Vol. 9, No. 4, March/April 2017, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

On May 2, 2016, long-awaited rule changes went into effect for practice before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO).1 One of the newly implemented rules offers patent owners an opportunity to provide a more robust preliminary response to a petition for inter partes review (IPR), covered business method (CBM) review, or post-grant review (PGR), with “new” testimonial evidence. Previously, petitioners could include testimonial evidence prepared for the proceeding with their petitions but patent owners were precluded from doing so with their preliminary responses,2 an asymmetric situation that unfairly favored petitioners, according to some commentators.3 This article reviews tactical considerations for and against inclusion of new testimonial evidence4 in patent owner preliminary responses. The authors also review IPR proceedings filed after the rule changes took effect, to gauge the prevalence and impact of new testimonial evidence submitted by patent owners in support of their preliminary responses.

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