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ARTICLE · 03 MAY 2016

Amended PTAB Rules To Take Effect on May 2, 2016

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On May 2, 2016, amended rules governing post-grant proceedings before the Patent and Trial Appeal Board, including inter partes review, post-grant review, and covered business methods, will take effect.

United StatesIntellectual Property
Charlie Lyu
Charlie Lyu
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On May 2, 2016, amended rules governing post-grant proceedings before the Patent and Trial Appeal Board ("PTAB"), including inter partes review ("IPR"), post-grant review ("PGR"), and covered business methods ("CBM"), will take effect. The rules apply to all currently pending and future proceedings before the PTAB.

The primary amendments are:

Testimonial Evidence Permitted in Patent Owner Preliminary Response

Previously, patent owners could not submit testimonial evidence, such as expert declarations, until after the institution of the post-grant proceeding. As amended, the rules permit submission of testimonial evidence with the preliminary response. The rules also allow petitioners to seek leave to file a reply to the preliminary response upon a showing of good cause. The amended rules note, however, that any genuine issues of material fact resulting from the testimonial evidence will be resolved in favor of the petitioner.

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