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ARTICLE · 24 JULY 2019

USPTO Releases Second Update To PTAB Trial Practice Guide, Part 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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On July 15, 2019, the USPTO released a second update of certain sections of the Trial Practice Guide to provide further guidance on the rules governing AIA trial proceedings, also known as PTAB trial proceedings.

United StatesIntellectual Property
Joshua Goldberg
Joshua Goldberg
Jason Stach
Jason Stach
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On July 15, 2019, the U.S. Patent and Trademark Office (USPTO) released a second update of certain sections of the Trial Practice Guide to provide further guidance on the rules governing AIA trial proceedings, also known as Patent Trial and Appeal Board (PTAB) trial proceedings. In a two-part summary, we highlight some of the more impactful updates set forth in the updated Trial Practice Guide.

Institution of Trial

  • Parallel Petitions: the update states that "one petition should be sufficient to challenge the claims of a patent in most situations." TPG3, 26. The update further provides that, to date, the majority of patents have been challenged with a single petition, and two or more petitions against the same patent may place a substantial and unnecessary burden on the Board and the patent owner. Id. "[M]ultiple petitions by a petitioner are not necessary in the vast majority of cases." Id.

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