U.S. Patent Office's Proposed Rule Changes To AIA Trial Practice

On May 27, 2020, the U.S. Patent Office published a notice of proposed rulemaking to the rules of practice in IPR, PGR, and CBM proceedings as follows:

First, in accordance SAS Institute Inc. v Iancu, 138 S. Ct. 1348 (2018) ("SAS"), the Office proposed revision of 37 CFR §§ 42.108 and 42.208(a) to provide for institution of an IPR, PGR, or CBM on all challenged claims (and all of the grounds of unpatentability) presented in a petition, or none (and denial of the petition). This proposal should not come as a surprise to practitioners as it essentially implements the Board's current SAS practice of instituting on all claims and all grounds, or none.

Second, the Office proposed revision of 37 CFR §§ 42.23, 42.24, 42.120, and 42.220 to permit: (a) replies and patent owner responses to address issues discussed in the institution decision, and (b) sur-replies to principal briefs (i.e., to a reply to a patent owner response or to a reply to an opposition to a motion to