Fildes & Outland, P.C.

Request for Comments – Proposed Changes to Motions to Amend in AIA Trials

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On October 29, 2018, the USPTO published a request for comments on proposed new procedures for motions to amend in AIA trials before the PTAB.  The newly proposed procedures would provide for the patent owner receiving feedback in the way of a non-binding preliminary decision on a motion to amend, and the patent owner having the opportunity to submit a revised motion to amend based on the feedback.  The proposal also sets forth a timeline in order to ensure that the process remains within the 12-month statutory period for an AIA trial.  Under the proposed timeline, the patent owner would have 1.5 months from the institution decision to file a motion to amend, and the petitioner would have 1.5 months to reply to the motion.  The PTAB would then have 1 month to render a preliminary decision on the motion, and subsequent replies and sur-replies of the patent owner and/or petitioner would have consecutive 1 month deadlines.  Additionally, if the petitioner ceases to participate in the proceeding, the PTAB may solicit patent examiner assistance, which would be rendered in the form of a non-binding advisory report on the patentability of the proposed substitute claims.  The USPTO is also seeking comment as to whether the burden of persuasion regarding the patentability of proposed substitute claims in motions to amend should continue to follow the order set forth in Western Digital, i.e. the petitioner having the burden to show that proposed substitute claims are unpatentable, with the PTAB determining whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record.  Further, the USPTO plans to implement a pilot program to test the efficacy of the proposed changes to motion to amend practice in AIA trials.

Any comments must be submitted to the USPTO by December 14, 2018.

Further information may be accessed on the USPTO website at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/resources/ptab-mta-rfc.