This article appeared in The Intellectual Property Strategist, an ALM/Law Journal Newsletters publication that provides a practical source of both business and litigation tactics in the fast-changing area of intellectual property law, including litigating IP rights, patent damages, venue and infringement issues, inter partes review, trademarks on social media – and more.

On May 27, 2020 the U.S. Patent and Trademark Office (USPTO) proposed rule changes to govern inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review proceedings at the Patent Trial and Appeal Board (PTAB). The most significant proposal would eliminate the presumption that a genuine issue of material fact created by testimonial evidence filed with a patent owner preliminary response would be viewed in the light most favorable to petitioner when deciding to institute a review. Adoption of this rule could encourage more patent owners to file declarations with their preliminary responses, and may ultimately result in decreasing petitioner success rates in obtaining institution of review. The other changes would simply conform the rules to current USPTO practices, and are therefore less noteworthy. Below is a summary of each proposed rule change and its potential impact on PTAB practice.

Rule Change #1: Removing the requirement to view a genuine issue of material fact created by testimonial evidence filed with a patent owner preliminary response in the light most favorable to petitioner for purposes of institution.

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