Representative Order Suggests Evolving Motion to Amend Practice

Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled its charge as a speedy, cost effective alternative to patent litigation. But, that is not to say that the road has been completely bump-free. As discussed previously, there has been some controversy in the early going as patentees struggle to adapt to the motion requirements necessary for amending claims before the PTAB. That is, many patentees perceive the rigid motion requirements as an unfair hurdle, justifying their criticism on the fact that the PTAB has yet to permit a contested amendment.

In response, the PTAB has gathered feedback from the interested public on motion to amend practice in a recent Federal Register Notice entitled: Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board, which included the query:

What modifications, if any, should be made to the Board's practice regarding motions to amend?

While the USPTO has yet to issue a response to the recent feedback, it appears that the PTAB is poised to adopt the suggestion to move claims from the body of the motion, to an appendix.

Back in September, I recommended that claim listings accompany the motion as an appendix (i.e., so that page count is not impacted)

That is, current motion to amend practice could be improved by relaxing some formalities that constrain the ability to fully develop the motion, such as page limits. Given the 1-for-1 requirement for substituted vs. cancelled claims, not counting the pages of actual claim text toward the 15 page limit for the Motion to Amend is unlikely to adversely impact PTAB scheduling/workload and would free up additional pages for substantive discussion.

In a recent decision, Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19, October 30, 2014, listed as a "representative order" on the USPTO website last week, the Board authorized the patent owner to place its substitute claims in an appendix. This claim listing did  not count toward the 15-page limit for a motion to amend claims.

Going forward, those patentees attempting amendment should seek similar relief from the PTAB.