How the PTAB Trial Rules Have Changed Since 2012

The procedural rules for trials before the Patent Trial and Appeal Board live in 37 C.F.R. Part 42. They govern inter partes review, post-grant review, the former covered business method program and derivation proceedings. Since the first version in 2012, the USPTO has revised them many times, sometimes in response to court decisions and sometimes on the basis of its own experience running trials.

This page traces the general direction of those changes. It is a history, not a statement of current text: for the latest version, read the current Part 42 and the Federal Register notices that explain each change.

2012: the original rules

The America Invents Act directed the USPTO to issue regulations for the new trial proceedings. The Office published final rules in August 2012, effective September 16, 2012, when IPR and PGR became available. The rules established:

• general trial procedure in Subpart A (§§ 42.1–42.80), covering filing, mandatory notices, page limits, motions, discovery, testimony and oral hearing;
• proceeding-specific subparts for IPR, PGR, CBM review and derivation;
• the broadest reasonable interpretation standard for claim construction; and
• motion-to-amend requirements, including a presumption of one substitute claim per challenged claim.

The Office also published the first Trial Practice Guide at the same time; see the PTAB Trial Practice Guide.

2015: the “quick fix”

After the first couple of years of trials, the Office made a set of modest procedural amendments, often called the “quick fix.” They addressed practical problems parties had raised, for example by allowing more pages for motions to amend and permitting the claim listing to be placed in an appendix rather than counted against the page limit. The Office described these as initial changes, with more substantive proposals to follow.

2016: word counts and preliminary-response testimony

A more substantial round of amendments took effect in 2016. Among other things, it:

• replaced page limits for petitions and certain other papers with word counts, such as the 14,000-word limit for IPR petitions now in § 42.24;
• allowed the patent owner to file testimonial evidence, such as an expert declaration, with its preliminary response;
• added a certification requirement modeled on Federal Rule of Civil Procedure 11, under which signing a paper certifies its factual and legal basis (§ 42.11); and
• set out how genuine factual disputes raised by preliminary-response testimony would be treated at institution, at that time viewed in the light most favorable to the petitioner.

2018: the Phillips claim construction standard

In 2018 the Office replaced broadest reasonable interpretation in AIA trials. For petitions filed on or after November 13, 2018, the Board construes claims using the same standard as a federal court, following Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc), and considers prior constructions from courts or the ITC that are timely made of record (§ 42.100(b) and its counterparts). See claim construction during inter partes review.

Late 2020: institution after SAS

The Supreme Court’s decision in SAS Institute Inc. v. Iancu (2018) required the Board to decide every claim challenged in an instituted IPR. The Office first responded with guidance and then, in a late-2020 final rule, amended the institution rules to provide that review proceeds on all challenged claims and all grounds, or not at all. The same rulemaking removed the presumption favoring the petitioner on testimonial disputes at institution, so the Board weighs the evidence on the record as a whole. See PTAB practice after SAS.

Later changes: motions to amend and beyond

Motion-to-amend procedure has been a recurring subject. After Aqua Products, Inc. v. Matal (Fed. Cir. 2017) (en banc), the Office addressed the burden of persuasion on substitute claims by rule, and procedures first tested in a 2019 pilot program, such as preliminary guidance and revised motions, were later made permanent. See amending patent claims during inter partes review.

Other areas, including Director Review after United States v. Arthrex, Inc. (2021) and discretionary denial of institution, have been addressed through a mix of interim processes, guidance and rulemaking. These have changed frequently, so current USPTO materials should be checked rather than older summaries.

The overall trajectory

Period	Main theme
2012	Building the trial system from scratch
2015–2016	Practical fixes based on early experience: more room for amendments, word limits, patent owner testimony
2018	Aligning claim construction with the courts
2020–2021	Responding to Supreme Court decisions on institution scope and fairness of the institution record
Later	Refining motions to amend, Director Review and institution discretion

The general movement has been toward procedures that look more like litigation, with more balance between petitioners and patent owners at the institution stage.

Key takeaways

• The PTAB trial rules are in 37 C.F.R. Part 42, first adopted in 2012 and amended many times since.
• The 2015 and 2016 amendments adjusted page and word limits, motion-to-amend logistics and preliminary-response evidence.
• Since November 13, 2018, the Board uses the Phillips claim construction standard.
• A late-2020 rule codified all-claims, all-grounds institution after SAS.
• Always check the current eCFR text and the Federal Register for the latest rules.