March 15, 2019
Authored and Edited by J. Derek McCorquindale; Trenton A. Ward
Today, the USPTO released its long-awaited “Notice Regarding a New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board” (“Notice”). The Notice is a 36-page document warranting close scrutiny for the changes it potentially introduces into post-grant proceedings, some of which are outlined below. The new pilot program for Motions to Amend (“MTA”) will apply to all AIA trial proceedings instituted on or after March 15, 2019 (i.e., formal publication of the Notice in the Federal Register).
The pilot program introduces two options not previously available: “The first option is that a patent owner may choose to receive preliminary guidance from the Board on its MTA. The second option is that a patent owner may choose to file a revised MTA after receiving petitioner’s opposition to the original MTA and/or after receiving the Board’s preliminary guidance (if requested).” Notice at 3. The schedule of proceedings is modified depending on the options selected by the Patent Owner, with generally “more time to prepare filings and evidence.” Notice at 22-23.
There had been concern following the USPTO’s initial Request for Comment of October 29, 2018 (“RFC”) that the changes envisioned for MTA practice might be mandatory for all parties seeking claim amendments in post-grant trial proceedings, lacking any ability to “opt-out” as might be expected of a true “pilot” program. However, responding to this criticism, today’s Notice makes clear that “a patent owner who files an MTA will have the ability to choose how that motion will proceed before the Board.” Notice at 2.
As part of the pilot program, the Patent Owner now has new options to pursue in step-wise fashion, as desired. These choices for MTA procedure range from the current submission and review path for MTAs (with only minor scheduling changes); to the possibility of adding one or both of a Request for Preliminary Guidance on the MTA and/or submission of a Revised MTA and subsequent briefing. These options are briefly summarized below:
Even with parties opting for the all new MTA procedures in the Notice, the Board still anticipates completing the entire trial proceeding within the 12-month statutory deadline, with any case-by-case extensions granted only for good cause. Notice at 19 (“the Board will typically issue its final written decision in accordance with the statutory deadline”). The new procedures can be complicated and deadlines must be researched fully; the Notice provides in-depth treatment, including the following graphics detailing the timing of the various options:
Several other important points are made in the Notice:
Director Iancu has repeatedly stated that he desires to give patent owners a more robust ability to amend claims during an AIA trial. This pilot program attempts to take steps in that direction by enabling patent owners to receive valuable feedback from the PTAB on proposed amendments and the ability to improve the proposed substitute claims in view of that feedback.
United States Patent and Trademark Office (USPTO), Patent Trial and Appeal Board (PTAB), pilot program, America Invents Act (AIA), motions to amend (MTA), 2019 Top Insights
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