The Patent Office initially distributed its Preliminary Practice Guide (“2012 Practice Guide”) in August 2012 nearby the declared tenets for the recently actualized America Imagines Act (“AIA”) preliminary procedures, including entomb partes survey, post-concede audit, secured business technique audit, and determination procedures. The 2012 Practice Guide was proposed to notify experts of standard practices for the then new preliminary procedures and in addition to build up consistency in strategy among unique Patent Preliminary and Offer Board (PTAB) boards. Obviously, the 2012 Practice Guide showed up in vast part to mirror the practices utilized by the Patent Office for previous challenged procedures, for example, reevaluations and impedances.
While the 2012 Practice Guide seems to have achieved its expected motivation behind giving notification to the different partners, almost six years of involvement with the AIA preliminary procedures has featured certain inadequacies in the utilization of the 2012 Practice Manual for AIA preliminary procedures. Hence, the Patent Office has started an arranged arrangement of updates to the Training Aide, with the principal such refresh having been discharged in August 2018. The August 2018 Practice Guide refreshes are expected to carry the Training Aide into conformance with the Patent Office’s present view on best practices. Significantly, these updates don’t by and large reflect new practices, yet rather seem to assemble in one place the investigation utilized by existing PTAB choices in deciding ordinarily questioned procedural issues.
The August 2018 refreshed segments of the Preliminary Practice Guide include:
- Direction on the utilization of master declaration (Segment I.G.) – This refresh mirrors the significance that master declaration has gone up against in AIA preliminary procedures where master declaration is customarily the best, and once in a while the main, proof on critical truth issues. The refresh features the cases, guidelines, and resolutions the PTAB commonly refers to when settling disagreements regarding specialists capabilities, type of declaration, extent of declaration, and how the declaration is weighed. It additionally delineates the PTAB routine with regards to giving wide scope in accommodation of master declaration and that difficulties to such declaration should frequently be coordinated to the heaviness of the declaration instead of its suitability.
- Direction on existing standards on word tally and page limits (Area II.A.3.) – This refresh mirrors the present practice given the codification of word tallies (rather than page limits) for the vast majority of the key briefs in AIA preliminary procedures. Maybe most essential in this refresh is a suggestion to professionals that the PTAB inclines toward compact actuality based introduction of contentions with references to the proof of record to help the supposed realities. As the PTAB is knowledgeable in patent law, gatherings ought not exhaust words/pages on clarifying general lawful principals except if there is a particular debate with the law as it identifies with the realities of the case.
- Thought of different non-selective factors in the assurance of whether to establish a preliminary (Area II.D.2.) – This refresh tends to the potential provocation of Patent Proprietors through the organization of various procedures against a similar patent. In vast part, this refresh echoes the factor-based tests the PTAB has issued through precedential and useful choices and in addition gives reference to resolutions, rules, and other court choices usually refered to by PTAB boards in tending to these circumstances. The net impact of these choices has been to lessen occurrences where a solitary Candidate can start various AIA preliminary procedures against a similar patent or where diverse Solicitors can start isolate AIA preliminaries that include similar issues subsequently diminishing the quantity of AIA preliminaries that a Patent Proprietor may need to safeguard against.
- Accommodating sur-answers to important briefs as an issue of right (Area II.I.) – Maybe most intriguing of the updates is the progression of asking for sur-answers to central briefs. The August 2018 refresh goes so far as to pre-emptively incorporate dates for such sur-answers in the underlying planning request. Beforehand, the giving of sur-answers was case and PTAB board subordinate with no unmistakable rules on when a board would acknowledge or deny such demands. It currently gives the idea that such demands will by and large be allowed which has an essential substantive impact in giving the Patent Proprietor the last word in the important briefs (or the Applicant the keep going word on a movement to change). This change adjusts to the pragmatic reality that once the PTAB has established an AIA preliminary, a Patent Proprietor should regularly induce the PTAB board that an Official choice should turn out uniquely in contrast to the Organization Choice despite the fact that the lawful weight actually stays with the Solicitor.
- Direction on the qualification between movements to bar and movements to strike, and the best possible utilization of each (Segment II.K.) – These updates accentuate that by and large, the PTAB will choose movements to prohibit or strike after the oral hearing given the shot the issues brought up in these movements might be unsettled. In any case, when these movements identify with issues that are probably not going to wind up debatable or that could really bias a gathering at the hearing then the PTAB may consider a choice before the hearing.
- Strategies for oral hearing before the Load up, including the utilization of live declaration, sur-counter, and default time for the hearing, and accommodating a pre-hearing gathering and potential early goals of issues (Area II.M.) – This last part of the refresh to the Training Aide licenses Patent Proprietors to ask for the last word at the oral hearing, which lines up with the refreshed routine with regards to giving the Patent Proprietor the last chief brief through a sur-answer. The refresh additionally allows a PTAB board to give direction on specific issues the PTAB board might want tended to by the gatherings amid a pre-hearing meeting. This direction can enable the gatherings to tailor their contention to the most critical issues from the perspective of the board given the constrained time dispensed for oral hearings.