Tuesday, May 10, 2022

TTAB Considers Pilot Pretrial Conference Program

In another step toward making TTAB proceedings as complicated and expensive as civil litigation, the TTAB is considering a pilot program "for holding Final Pretrial Conferences in certain inter partes (trial) cases to better manage and streamline opposition and cancellation proceedings that proceed to trial. The goal of the pilot is to save time and resources of parties and the TTAB, and to foster the effective and efficient presentation of evidence." Announcement and additional discussion here.

Under the proposed program, the Board would focus on cases "identified as likely to generate unnecessarily large or disorganized and unwieldy records, or which the TTAB otherwise determines, based on the circumstances of individual cases, to be appropriate for inclusion in the pilot program."

For this pilot program to work effectively, prior to the FPC each party would provide each other party more pre-trial information than is presently required by TTAB pretrial disclosure requirements. For example, parties would provide lists of Notice of Reliance evidence and lists of all testimony/exhibits planned for trial use, which are not otherwise required. The parties also would be required to state all their objections to expected evidence of adverse parties, with limited exceptions. The TTAB, in directing the parties to prepare for the FPC also would emphasize the parties’ consideration and adoption of stipulations regarding evidence to be introduced and considered, as well as stipulations of fact.

A model format for a final pretrial conference order is provided here. If you would like to comment on this proposal, you may do so at TTABFeedback@uspto.gov. 

 Read comments and post your comment here.

TTABlogger comment: I think the Board should look to ways of streamlining cases early on, for example by holding an early conference to discuss issues, getting rid of bogus fraud claims at the git-go, and limiting discovery both in scope and in length of the discovery period.

Text Copyright John L. Welch 2022.


At 2:39 PM, Anonymous Anonymous said...

Agree with John!

Who was complaining about the current system? If it ain't broke don't fix it?

I believe the percentage of cases that settle at TTAB is extremely high compared to USDC. I believe that is because the current system allows the parties to figure it all out themselves and not getting bogged down in litigation saves parties a lot of time and money.

Of the cases that do go to "trial" there are only a few that get really bogged down and dragged out, but that is primarily due to the actions of a few.

When is this new conference to occur? That is the key. If it is too early it will force more parties into "litigation mode" which will result in fewer early resolutions.

The current discovery conference is a joke because some attorneys just consider it a ten minute nuisance phone call. When TTAB judges or IA's participate, many improper claims and defenses can and do get tossed. So perhaps that is the part that needs fixing.

At 11:27 PM, Anonymous Anonymous said...

Seems pretty unnecessary to me.

At 11:32 PM, Anonymous Anonymous said...

The proposed new conference is meant to help the Board more than the parties. The Board wants to show improved pendency metrics by reducing the time it takes them to issue a final decision. From this perspective, the conference would help facilitate faster review of the record by curtailing unstructured, voluminous evidentiary submissions during the trial period.

While I'm sympathetic to the Board's goals, I am skeptical that a conference would meaningfully further them. If a party is a bad actor or if its counsel otherwise cannot be bothered to follow the existing rules, a conference is unlikely to make much difference.


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