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Expected Changes to Patentee Preliminary Response Among Noteworthy Changes
The USPTO has now published its promised Patent Trial & Appeal Board (PTAB) Rule Package (advance copy here). The proposed changes are largely expected given the discussion coming out of the agency for months on these issues. The proposals are as follows:
Obviously, the clarification of the claim construction used for soon-to-be-expired patents, and the ability to file testimonial evidence in a preliminary response are the most noteworthy changes. Given that disputed facts are construed in favor of the petitioner, I would not expect the new testimony to advance the needle much for patentees. But, this change will dispense with yet another "unfairness"criticism that has little practical impact in most cases. In the Notice the Office also explains that:
As will all Notice and Comment Rule making, these changes will not go into effect until the Final rules publish some months from now, likely early 2016. (Comments will be due from the public in October).
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