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ARTICLE · 03 JANUARY 2018

Word Games At The PTAB

Jones Day
Jones Day
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In 2016, the PTAB changed the limits for the length of certain filings in post grant proceedings, including petitions and responses, from limits based on the number of pages to limits based on the number of words.

United StatesIntellectual Property

In 2016, the PTAB changed the limits for the length of certain filings in post grant proceedings, including petitions and responses, from limits based on the number of pages to limits based on the number of words. The USPTO stated that this change was intended to improve efficiency within the office. As a practical matter, however, it was also likely intended to minimize the formatting games that parties had often used to make an otherwise too-long submission fit within the page limits. While the change may have been effective in that regard, some parties still attempt to improperly game the system.

For example, the PTAB accepts certain commonly-recognized acronyms―such as "POSA" for "person of ordinary skill in the art"―even though the use of such abbreviations will reduce the overall word count of the submission (by six words for every time the acronym is used). However, if a party attempts to lower its word count by using other, non-standard acronyms or

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