Proposed PTAB Rule Changes: More Of The Same?

Today, May 27, 2020, the USPTO published in the Federal Register a new set of proposed rule changes that mostly codify the way contested proceedings are conducted in front of the Patent Trial and Appeal Board. The proposed changes fall into three parts.  A first set of changes conforms the rules to be consistent with the Board's interpretation and application of the Supreme Court's decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). These proposed changes would by rule require institution on all claims and grounds raised in a petition, or no institution at all, in IPRs and other contested proceedings. A second set of changes conforms the rules to the current standard practice of providing sur-replies to principal briefs and providing that a patent owner response and petitioner reply may respond to a decision on institution. A third and new rule change would eliminate the presumption that a genuine issue of material fact created by the patent owner's