On December 9, 2020, the U.S. Patent and Trademark Office published some final rules in the Federal Register. These rules largely codified the existing practice of the Patent Trial and Appeal Board (PTAB) as to whether and how the PTAB initiates an Interpartes Review (IPR) or a Post-Grant Review (PGR), and the ability to either Petitioner and patent holder to make a PTAB decision on the establishment.
In one area, the Office changed the rules of practice to change the PTAB treatment of certificates that a patentee might submit in a preliminary response before deciding on establishment. Now there will be no presumption in favor of the petitioner if the patent proprietor’s pre-institutional credentials are a matter of fact. The amended rules may make patent holders more willing to submit testimonials to refuse to establish an IPR or PGR.
When the America Invents Act (AIA) IPR and PGR proceedings began, patent holders were not allowed to provide evidence in a preliminary response to a petition to establish an IPR or PGR. In April 2016, the Office published rules that allow patent holders to provide testimony with their preliminary response. Under these rules, it was suspected in favor of the petitioner that the patent proprietor’s testimony posed a real problem of material facts. This presumption existed only for the purpose of deciding whether to introduce an IPR or a PGR.
While the 2016 rules allowed patent holders to provide testimony as part of their efforts to prevent the establishment of an IPR or PGR, the presumption made a number of patent holders less willing to produce such evidence. Without considering the evidence that would be in an IPR or PGR litigation, patent owners were concerned about showing their hand too early with little effect.
Prior to the new amendment, 37 CFR Sections 42.108 (c) and 42.208 (c) in the relevant section (emphasis added) read: “The board’s decision will take into account a preliminary response from the patentee when filing such a response, including such testimony but a real question of material facts raised by such evidence is being looked at from the point of view most favorable to the petitioner just to decide whether to set up an institute [a] Review. “The amendment removes the italic words.
Commenting on the amended rules, the Office acknowledged that a petitioner bears the burden of meeting the standard for establishing an IPR or PGR under 35 USC Sections 314 (a) and 324 (a), but noted that The deleted words A presumption in favor of a petitioner at the establishment stage for this class of evidence may lead to results incompatible with this burden.
The Office said the change in rules will allow any testimony that is part of a patentee’s preliminary response to be considered part of the body of evidence. These certificates are treated in a similar way to other pieces of evidence for institutional purposes.
It will be interesting to see how patent owners react to the changed rules. Will they come up with more testimonials trying to avoid an institution in the first place? The new rule might be worth reconsidering how much of their hand a patentee might want to show. After all, IPRs and PGRs are expensive for patent holders. If submitting wider credentials offers a better chance of avoiding an institution, patent holders may choose to oppose an institution more broadly than before.