Today the USPTO released a
113-page set of proposed changes to AIA post-grant proceedings,
including IPR, PGR and CBM proceedings. The USPTO has been
attempting to address concerns expressed by the public, having
implemented an earlier set of "quick fix" rules changes
on May 19th. The prior and newly proposed rule changes may impact
proposed legislative changes being debated in Congress. Among
others, some of the more significant changes being proposed in the
new notice are as follows.
Patent Owner Could Submit Newly Created Testimonial Evidence in
Its Preliminary Response
At present, a patent owner can only use declarations and
testimonial evidence already in the record, such as that from
original prosecution of the patent or a parallel litigation
proceeding. Under the proposed rule, patent owners could retain and
use new declarants to respond to a petition in the preliminary
response, prior to an institution decision.
