Office Patent Trial Practice Guide, July 2019 Update

Federal Register, Volume 84 Issue 136 (Tuesday, July 16, 2019)
[Federal Register Volume 84, Number 136 (Tuesday, July 16, 2019)]
[Pages 33925-33926]
From the Federal Register Online via the Government Publishing Office []
[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 The TPG update from August 2018 is
available at and the full version of the
August 2012 TPG continues to be available for reference on the USPTO
website at
    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]