The PTAB Trial Practice Guide: What It Is and How to Use It

Anyone preparing a petition, preliminary response or trial paper before the Patent Trial and Appeal Board quickly learns that the rules in 37 C.F.R. Part 42 do not answer every practical question. How long should a deposition last? When can a party file a sur-reply? What does the Board expect in a motion to amend? The USPTO’s Trial Practice Guide fills many of those gaps.

What the guide is

The Trial Practice Guide is a document published by the USPTO to explain how the Board conducts AIA trials, including inter partes review, post-grant review, the former covered business method program and derivation proceedings. It describes the Board’s expectations, typical schedules and preferred practices.

It is guidance, not a regulation. The rules in Part 42 went through notice-and-comment rulemaking and are binding. The guide explains how the Board generally applies those rules and exercises its discretion. A panel may depart from the guide’s suggestions in a particular case, and the USPTO may revise the guide without formal rulemaking.

How it developed

• August 2012. The original guide was published alongside the first Part 42 rules, shortly before AIA trials began on September 16, 2012.
• August 2018 and July 2019. The Office issued updates in installments, revising sections to reflect experience from several years of trials and later legal developments.
• November 2019. The USPTO combined the original guide and its updates into a single Consolidated Trial Practice Guide, so that readers no longer had to piece together several documents.

The Office has continued to issue separate notices and guidance on specific topics since then. Check the PTAB pages on the USPTO website for the current version of the guide and any later materials that supplement or supersede parts of it.

Typical contents

The consolidated guide covers the life of a trial from petition to final decision. Topics include:

• Petitions and institution. What the Board looks for in a petition, the role of expert testimony, and considerations for institution.
• Preliminary responses. What a patent owner may include, and how testimonial evidence at that stage is handled.
• Discovery. Routine discovery, additional discovery and the standards for obtaining it.
• Testimony guidelines. Expectations for depositions and cross-examination of declarants; see taking a deposition in an IPR or PGR.
• Motions to amend. Requirements and practical expectations for substitute claims; see amending patent claims during inter partes review.
• Replies and sur-replies. The proper scope of replies and the availability of sur-replies; see getting the last word in PTAB trials.
• Oral hearing. Scheduling, demonstrative exhibits and the conduct of the hearing.
• Settlement and other matters. How settlement affects a proceeding and other administrative topics.

How practitioners use it

The guide works best as one layer of a larger set of authorities:

Authority	Role
35 U.S.C. chapters 31 and 32	The statute: who may file, thresholds, timing, estoppel
37 C.F.R. Part 42	Binding procedural rules: content of papers, limits, deadlines
Precedential and informative Board decisions	How the Board has applied the rules to specific situations
Trial Practice Guide	The Board’s general expectations and preferred practices
Scheduling orders and panel instructions	Case-specific requirements that control in that proceeding

In practice, a party starts with the statute and rules, checks the guide for how the Board approaches the issue, and then looks for precedential or informative decisions on point. Where a scheduling order or a panel’s instructions differ from the guide, the order controls in that case.

Because the guide is updated without rulemaking, older citations can go stale. A statement in a 2012 or 2018 version may have been revised or withdrawn. The history of the PTAB trial rules shows how often the underlying rules have also changed.

Key takeaways

• The Trial Practice Guide explains how the Board conducts AIA trials; it is guidance, not binding regulation.
• It was first published in August 2012, updated in 2018 and 2019, and consolidated in November 2019.
• It covers petitions, preliminary responses, discovery, testimony, motions to amend, sur-replies and oral hearings.
• Read it with Part 42, precedential decisions and any scheduling order, and check the USPTO’s PTAB pages for the current version.