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Baker Botts’ Comments on PTAB rules effective May 2016; rules will permit testimony in patent owner preliminary response


NEW YORK, April 5, 2016 - Baker Botts L.L.P., a leading international law firm, announced today that the firm provided the following comments on the USPTO’s recently issued rules for practice before the Patent Trial and Appeal Board (PTAB).

“This will be another important year for the wide spectrum of intellectual property issues that are on the horizon in 2016,” said Paul Ragusa, Partner in the firm’s Intellectual Property practice of the firm’s New York office.

On March 31, the USPTO issued new final rules for practice before the Patent Trial and Appeal Board (PTAB). The new rules will be effective May 2, 2016. Notable changes to PTAB practice are highlighted below, and the full text is available to read here.

“Our Intellectual Property group closely monitors changes to the law and rules of practice, such as the new PTAB rules on the use of testimonial evidence, to relay important implications the developments have on practitioners and IP owners alike,” said Ragusa. The Intellectual Property practice recently released “Intellectual Property Cases to Watch in 2016,” an outlook on the “key issues” impacting the industry. Read the full outlook here.

Patent Owner’s Preliminary Response 

Under the new rules, a patent owner can now submit testimonial evidence in a preliminary response. The USPTO notes that this change provides greater parity between the types of evidence that can be submitted in a petition and preliminary response.

The rule is subject the caveat that any genuine issues of material fact created by the testimonial evidence should be resolved in favor of the petitioner for purposes of institution, thus ensuring that the petitioner will have an opportunity for cross-examination.

Claim Construction Standard for Expiring Patents

The USPTO has modified the claim construction standard for AIA post-grant proceedings with respect to patents that will expire prior to the issuance of a final written decision.

The PTAB currently applies the broadest reasonable interpretation standard to all unexpired patents, but under the new rule, can apply the district court Phillips-type claim construction standard to patents that will expire during the proceeding, upon the request of either party. Note that the claim construction standard for inter partes review is currently under review at the Supreme Court in Cuozzo Speed Technologies v. Lee, No. 15-446 (cert. granted January 15, 2016).

Rule 11-type Certification

The new rules require practitioners to provide a certification similar to Rule 11 of the Federal Rules of Civil Procedure with all papers filed in a proceeding. The new rules also set forth procedures for imposing sanctions, both upon motion and on the PTAB’s initiative, for violations of this rule.

Word Count Limits on Major Briefings

With these new rules, the current page limits for major briefings are replaced with word limits.


After notice and comment, the USPTO has declined to adopt a proposed pilot program which would permit a single judge to make institution decisions. In addition to the changes above, the USPTO has indicated that the Office Trial Practice Guide will be amended to consider recent developments regarding motions to amend, additional discovery, real party-in-interest and privy issues, and confidential information. Baker Botts will continue to monitor this area of practice.


Baker Botts is an international law firm of approximately 650 lawyers practicing throughout a network of offices around the globe. Based on our experience and knowledge of our clients' industries, we are recognized as a leading firm in the energy, technology, and life sciences sectors. Since 1840, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit

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