August 2018

The Patent Trial and Appeal Board (PTAB) has just issued an update to the American Invents Act (AIA) Trial Practice Guide incorporating the Board’s current practices and providing further explanation of certain aspects of the Board’s practices to the public.

The updated sections of the Trial Practice Guide include:

  • Guidance on the use of expert testimony (newly added Section I.G.);
  • Guidance on existing rules on word count and page limits (Section II.A.3.);
  • Consideration of various non-exclusive factors in the determination of whether to institute a trial (Section II.D.2.);
  • Providing for sur-replies to principal briefs as a matter of right (Section II.I.);
  • Guidance on the distinction between motions to exclude and motions to strike, and the proper use of each (Section II.K.);
  • Procedures for oral hearing before the Board, including the use of live testimony, sur-rebuttal, and default time for the hearing (Section II.M.); and
  • Providing for a pre-hearing conference and potential early resolution of issues (Appendix A).

The updated Trial Practice Guide, containing only the revised sections, is available at the following link: Trial Practice Guide Update August 2018. The original full version of the Trial Practice Guide (originally issued in August 2012) continues to be available at the United States Patent and Trademark Office (USPTO) website at the following link: Trial Practice Guide August 2012.

The Office indicates that it anticipates releasing further updates to the Trial Practice Guide on a section-by-section basis to take into account feedback from stakeholders, changes in controlling precedent or applicable regulations, or further refinement of the Board’s practices over time.

If you have any questions, please contact our Post-Grant Practice Chair, Suni Sukduang, or post-grant practice group member, Margaux Savee.