Last week, the U.S. Patent and Trademark Office finalized a pilot program, giving patent owners new options in the amendment process, including the ability to revise proposed substitute claims in response to feedback from the Patent Trial and Appeal Board. “I think that this accomplishes or at least takes a step in the right direction with respect to enabling and providing a robust ability to amend claims during an AIA trial,” said Finnegan partner and former PTAB judge, Trenton Ward.
Groups including the Intellectual Property Owners Association (IPO) and American Intellectual Property Law Association (AIPLA) voiced concerns about the initial plan, but the USPTO seems to have incorporated the comments and concerns into a fair and predictable result. The director of the USPTO, Andrei Iancu, suggested some patent owners have stopped even trying to amend claims, seeing the effort as “largely futile.” “In order to fully implement the intent of the AIA, we must find a way to make this amendment process feasible and meaningful,” Iancu said.
The pilot program is completely optional, and various deadlines have been spread out, as to the earlier plan. The USPTO plans to reevaluate the pilot program in about a year, and make changes depending on feedback and effectiveness of the program. There are still doubts among attorneys that motions to amend will ever become widespread in AIA reviews, but overall, they believe it will help patent owners’ chance of success in amending patent cases.