By: Rich Graham and Matt Johnson

The USPTO’s Patent Trial and Appeal Board (PTAB) has published an update to the AIA Trial Practice Guide (TPG) containing additional guidance about trial practice before the Board.

The USPTO published the original TPG in August 2012, concurrent with the promulgation of the AIA Trial Rules. The TPG was intended to inform the public of standard practices during AIA trials before the Board and encourage consistency of procedures among panels of the Board. We are now updating certain sections of the TPG to provide further guidance to the public, accounting for almost six years of experience with the program. This TPG update is not all-encompassing, and there may be further revisions as we continue to review AIA trial proceedings.

Among other things, the updated sections of the TPG include guidance on

  • the use of expert testimony;
  • consideration of various non-exclusive factors in the determination of whether to institute a trial;
  • providing for sur-replies to principal briefs as a matter of right;
  • the distinction between motions to exclude and motions to strike, and the proper use of each;
  • procedures for oral hearing before the Board, including the use of live testimony, sur-rebuttal, and default time for the hearing; and
  • providing for a pre-hearing conference and potential early resolution of issues.

You can access the full text of the Updated AIA Trial Practice Guide here.

You can access Director Iancu’s August 8 Notice here.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.