Fildes & Outland, P.C.

The USPTO has initiated a new pilot program for motions to amend in AIA trial proceedings before the Patent Trial and Appeal Board, effective on March 15, 2019.  The pilot program provides two main procedures that were not previously available to patent owners that filed motions to amend in PTAB trials such as inter partes reviews.  The first new option under the pilot program is that a patent owner may request to receive preliminary guidance from the PTAB on its motion to amend.  The request for preliminary guidance must be made in the patent owner’s motion to amend, and the preliminary guidance will be issued after the petitioner files an opposition to the motion to amend (or after the time period for filing an opposition, if the petitioner chooses not to file an opposition).  The preliminary, non-binding guidance will typically be in the form of a short paper, but could be made orally to the parties, and will focus specifically on the limitations added to the claims in the motion to amend, rather than on the patentability of the originally filed claims.  The preliminary guidance will include comments as to whether the proposed motion to amend meets statutory and regulatory requirements, and comments as to whether the petitioner establishes a reasonable likelihood that the proposed substitute claims are unpatentable.

The second main aspect of the new pilot program is that the patent owner has the option to file a substitute motion to amend after the petitioner’s opposition to the original motion to amend and/or after receiving the preliminary guidance from the PTAB.  Of note, the patent owner may choose this option even if it did not request preliminary guidance on its original motion to amend.  The substitute motion to amend must include one or more new proposed substitute claims in place of the originally presented substitute claims, and the revised motion must present amendments, arguments, and/or evidence that is responsive to issues raised in the preliminary guidance and/or the petitioner’s opposition to the original motion to amend.  The substitute motion cannot include any amendments, arguments, or evidence unrelated to the issues raised in the preliminary guidance or petitioner’s opposition.  The petitioner may subsequently file an opposition to the revised motion to amend, the patent owner may then file a reply to the petitioner’s opposition, and the petitioner may file a sur-reply to the patent owner’s reply.  The substitute claims presented in the substitute motion to amend replace the amended claims presented in the original motion to amend.  Therefore, if the PTAB needs to address the motion to amend in the final written decision, it will only consider the substitute claims.

This pilot program is available in any AIA proceeding in which the PTAB institutes a trial on or after the effective date of the program (i.e., for any trial instituted on or after March 15, 2019).  Thus, for any transition cases that were initiated prior to the publishing of the pilot program, it is the institution date, rather than the date the petition was filed, that is controlling for determining eligibility in the pilot program.  The pilot program is a “pilot” in the sense that it is not yet a permanent and the USPTO may modify the procedures in the future.  Otherwise, the pilot program is freely and openly available in all AIA trials instituted on or after the effective date of the pilot.

A copy of the Federal Register notice may be accessed at https://www.govinfo.gov/content/pkg/FR-2019-03-15/pdf/2019-04897.pdf.

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PTAB Motion to Amend Pilot Program

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