[Federal Register Volume 84, Number 136 (Tuesday, July 16, 2019)]
[Pages 33925-33926]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-15083]



Patent and Trademark Office

[Docket No.: PTO-P-2019-0025]

Office Patent Trial Practice Guide, July 2019 Update

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.


SUMMARY: The United States Patent and Trademark Office (``Office'') 
issued a further update to the Office Patent Trial Practice Guide 
(``TPG'') in July 2019 to provide updated guidance to the public on 
standard practices before the Patent Trial and Appeal Board (``Board'') 
in the post-grant trial procedures implemented following the Leahy-
Smith America Invents Act (``AIA''). The Office published the TPG to 
provide practitioners with guidance on typical procedures and times for 
taking action in AIA trials, as well as to ensure consistency of 
procedure among panels of the Board.

FOR FURTHER INFORMATION CONTACT: Michael Tierney and William Fink, Vice 
Chief Administrative Patent Judges, by telephone at (571) 272-9797.

SUPPLEMENTARY INFORMATION: The Office issued a further update to the 
TPG in July 2019, to update the guidance set forth in the TPG by 
incorporating the Board's current practices and precedential decisions, 
and to provide further explanation of certain aspects of the Board's 
practices to the public. The Office previously issued an update to the 
TPG in August 2018. The TPG is

[[Page 33926]]

divided into sections, each directed to a particular stage of a typical 
AIA trial proceeding or a specific issue commonly encountered during 
such proceedings. Thus, the TPG contains informative material and 
outlines the current procedures that panels of the Board typically 
follow in appropriate cases in the normal course of an AIA trial 
proceeding. In order to expedite these updates and provide guidance to 
the public as quickly as possible, the Office has chosen to issue 
updates to the TPG on a section-by-section, rolling basis, rather than 
a single, omnibus update addressing all aspects of the current TPG. The 
Office anticipates releasing further revisions of the TPG on a periodic 
basis, to take into account feedback received from stakeholders, 
changes in controlling precedent or applicable regulations, or the 
further refinement of the Board's practices over time.
    The July 2019 update revises Sections I.A.2. (Prohibition on Ex 
Parte Communications), I.E.4. (Protective Orders), I.F.2. (Additional 
Discovery), I.F.5. (Live Testimony), II.B.6. (Claim Construction), 
II.C. (Patent Owner Preliminary Response), II.D.2. (Considerations in 
Instituting a Review), II.D.3. (Content of Decision on Whether to 
Institute), II.G. (Motions to Amend), II.H. (Opposition to a Motion to 
Amend), II.I. (Reply to Patent Owner Response and Reply to Petitioner 
Opposition to a Motion to Amend), II.J. (Other Motions), II.O. (Final 
Decision), II.P. (Rehearing Requests), and Appendix B (Protective Order 
    The July 2019 update of the TPG, containing only the revised 
sections, may be viewed or downloaded from the USPTO website at https://www.uspto.gov/TrialPracticeGuide3. The TPG update from August 2018 is 
available at https://go.usa.gov/xU7GP and the full version of the 
August 2012 TPG continues to be available for reference on the USPTO 
website at https://go.usa.gov/xU7GK.

    Dated: July 10, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2019-15083 Filed 7-15-19; 8:45 am]