AIPLA Comments on USPTO’s Advance Notice of Proposed Rulemaking (ANPRM)

Arlington, VA.  June 20, 2023 - The American Intellectual Property Law Association (AIPLA) submitted comments to the United States Patent and Trademark Office in response to its Advance Notice of Proposed Rulemaking published in 88 Fed. Reg. 77, at 24503 (April 21, 2023) (ANPRM) on “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.”  

AIPLA has submitted prior comments to the Office in support of PTAB-related reforms and supports, in principle, notice and comment rulemaking as the preferred mechanism to address the conduct of AIA trial proceedings. While AIPLA expressed concerns that some proposals in the ANPRM include proposals beyond the Director’s statutory rulemaking authority provided by 35 U.S.C. §§ 316 and 326, AIPLA comments focused on the Office needing to ensure post grant proceedings operate as intended—as an efficient alternative to district court challenges, balancing the interests of patent owners, accused infringers, and the public. 

The comment letter addresses a number of the Office’s proposals, including addressing Discretionary Denials Under 35 U.S.C. 314(a), 324(a), and 325(d), Limitations on Nonmarket Competitors, proposed definitions such as “compelling merits,”, Protecting Under-Resourced Inventors and Petitioners, Prior Adjudications Upholding Validity, Multiple Petitions, and proposed rulemaking with respect to Serial Petitions, Parallel Petitions, and Parallel Litigation. The letter also addresses proposals relating to the 35 U.S.C. 325(d) Framework, Separate Briefing for Discretionary Denial, and a proposal regarding whether pre-institution settlement agreements must be filed with the Board.  

AIPLA’s response also addresses some additional suggestions for the Office’s consideration, including applying a presumption of validity in AIA trial proceedings, having separate panels conduct trials post-institution, and rulemaking for an “off ramp” by ex parte reexamination or another expedited proceeding for amendments to challenged claims. 

To view the complete comments, please download the comment letter posted to the right of this page.