PTAB Updates the AIA Trial Practice Guide After Six Years by Maxey-Fisher, PLLC

The original AIA Trial Practice Guide (“TPG”) was published and implemented during the same time period as the AIA Trial Rules in 2012. Six years later, the Patent Trademark and Appeal Board (“PTAB”) decided the TPG needed an update. The purpose in the initial TPG was to make the standard practices during these trials apparent to the public and to create consistency in procedures during the trying a case. The PTAB believes that after six years of experience, certain sections of the TPG may have been overlooked in the past by parties and require an update to make the procedure clearer to the public. This update to the TPG was published on August 13, 2018.

The updates to the TPG are procedural. The updates effect the timing and use of expert testimony, sur-replies, and oral hearings. Additionally, the update provides for a pre-hearing conference wherein the parties preview the arguments with the panel so the panel can provide feedback as to which issues should be stressed or fleshed out during the hearing.

PTAB has made it clear that this will not be the only update, and it is likely that more updates will come in the future as PTAB learns the strengths and pitfalls of the TPG through PTAB’s constant review of AIA trial proceedings.

You can find the official statement by the United States Patent and Trademark Office here: https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/ptab-trial-practice-guide-august-2018

The published update can be found here: https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_Guide.pdf

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