On April 21, 2023, the USPTO proposed as Advanced Administrative Rule Making, “Changes Under Consideration to Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings Before the Patent Trial and Appeal Board” (see https://www.federalregister.gov/documents/2023/04/21/2023-08239/changes-under-consideration-to-discretionary-institution-practices-petition-word-count-limits-and), and is looking for comments by June 20, 2023.

In the May 16, 2023 PTAB Committee meeting of the NYIPLA, we will have a spirited discussion on the “Key Areas” addressed by the AARM including:

Key Area 1: Better ensure our practices align with the USPTO’s mission to promote and protect innovation and investment, and with the congressional intent behind the AIA to provide a less expensive alternative to district court litigation to resolve certain patentability issues while also protecting against patentee harassment

Key Area 2: Enhance and build on existing precedent and guidance regarding exercise of Director’s discretion to determine whether to institute an AIA proceeding

Key Area 3: Provide threshold definitions that apply to one or more categories of petitions subject to discretionary denials, setting forth criteria used to determine “substantial relationship,” “substantial overlap,” and “compelling merits”

Key Area 4: Provide procedural enhancements

Key Area 5: Clarify filing requirements for Settlement Agreements

Co-Chairs Charley Macedo and Ken Adamo, and President Rob Rando will lead the discussion, with  Former APJ Brian Murphy, LAC Co-Chair Anthony Lo Cicero, and our legislative consultant Chris Israel

1 CLE will be available for registered attendees.

Please remember to renew your membership, to continue to participate at no additional cost in the PTAB Committee CLE program on the third Tuesday of every month, at 4:00 p.m. ET.

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