The US Patent and Trademark Office (USPTO) published an Advance Notice of Proposed Rulemaking (ANPRM) on April 20 seeking comments on proposed changes to America Invents Act trial proceedings before the Patent Trial and Appeal Board (PTAB). The ANPRM includes a wide range of proposals relating to rules the USPTO director will use in exercising discretion to institute post-grant review proceedings, including discretionary denials under 35 USC 314(a), 324(a), and 325(d).
RETOOLED DISCRETIONARILY DENIAL RULES
To purportedly make the rules clearer and more predictable (as opposed to what the USPTO identifies as complicated balancing tests that can require substantial legal analysis), the USPTO is considering changes that would provide for categorical denial of institution based on certain conditions and circumstances (and exceptions), such as the following: Read more