On September 14, 2023, amendments to the Patent Act, Trademark Act, Design Protection Act, and Utility Act ("Amendment") were promulgated, which (i) introduces a third party trial witness system and (ii) allows the Intellectual Property Trial and Appeal Board (IPTAB) to unilaterally amend obvious errors in petitions for trial in IPTAB proceedings. Following a six month public notice period, the Amendment will become effective on March 15, 2024. 

Third Party Trial Witness

The Amendment introduces a third party trial witness system in IPTAB proceedings where (i) a third party witness may be allowed to submit a written opinion in a proceeding at the discretion of the administrative judge ("AJ") or (ii) national institutions or government agencies may submit a written opinion to the IPTAB on matters related to public interest. Under both scenarios, if a third party is allowed to submit an opinion, the AJ shall provide the party to the proceeding an opportunity to respond to the submitted opinion. 

Prior to the Amendment, only parties to the proceeding could file a petition to intervene in a trial and it was not possible for third parties or national institutions or government agencies to submit opinions. The Amendment may result in more complete and precise decisions by the IPTAB, but may also result in potential unnecessary interventions and proceedings taking longer to complete.

Ex-officio Amendment of Petitions for Trial

The Amendment allows the AJ to amend clear and obvious errors in petitions for trial sua sponte. Any such amendments by the AJ will be notified to the petitioner. The scope of the AJ's amendments to the petitions is limited to obvious errors. However, if the petitioner objects, the petitioner may file a written opinion within seven days which would purge any amendments made by the AJ from the records.

Previously, if a petition for trial contained errors, the AJ would notify the petitioner and request the petitioner to amend the petition within a certain period time, even for clear and obvious errors. It is expected the Amendment will reduce the time to correct such errors and make the petitioning process more efficient.