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ARTICLE · 15 APRIL 2016

USPTO Issues New Rules for Patent Office Trials

Hunton Andrews Kurth LLP
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Completing a rule-making cycle that began last August, the USPTO published a final set of rules for patent office trials, including inter partes reviews...

United StatesIntellectual Property
Paul Ackerman
Paul Ackerman
Sean Wooden
Sean Wooden
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Completing a rule-making cycle that began last August, the United States Patent and Trademark Office ("USPTO") published a final set of rules for patent office trials, including inter partes reviews ("IPR"), post-grant reviews ("PGR") and covered business method ("CBM") reviews.1 The rule changes address a number of issues, including the proper claim construction standard for patents approaching the end of their term and a patent owner′s ability to submit evidence in the form of expert testimony in a preliminary response. Some of these rules, which go into effect on May 2, 2016, have the potential to level the playing field that many patent owners believe is tilted against them. The specific rule changes, and the potential impact of these changes, are discussed below.

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