Monday, May 1 2023   \  Published by Veneer Shipley .

USPTO Issues Advance Notice of Proposed Rulemaking for PTAB Proceedings

USPTO Issues Advance Notice of Proposed Rulemaking for PTAB Proceedings

On April 21, the United States Patent and Trademark Office issued advance notice of proposed rulemaking concerning changes to America Invents Act proceedings before the Patent Trial and Appeal Board. Most of the changes under consideration relate to the PTAB’s discretion to deny institution of AIA proceedings, with additional changes addressing petition word count limits, settlement practices, and other issues. The proposed changes are based on comments from stakeholders and the public, including those received in response to the Office’s October 2020 request for comments on discretionary denial of institution.

Below is a summary of the proposed changes.

PTAB’s Discretion to Deny Institution

“In order to create clear, predictable rules where possible, as opposed to balancing tests that decrease certainty,” the Office would provide for discretionary denials of petitions in the following categories (subject to certain conditions, circumstances, and exceptions): Read more

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