On March 15, 2019, The US Patent and Trademark Office (PTO) provided notice of a pilot program for motion to amend (MTA) practice and procedures in trial proceedings under the America Invents Act (AIA) before the Patent Trial and Appeal Board (PTAB). In particular, a patent owner that files an MTA will be able to choose how that motion will proceed before the PTAB, including whether to request preliminary guidance from the PTAB on the MTA and whether to file a revised MTA. The pilot program is applicable to all AIA trial proceedings instituted on or after the date of the notice, including post-grant review, inter partes review and covered business method review.
Under the program, a patent owner may choose either to receive preliminary guidance from the PTAB on its MTA, or to file a revised MTA after receiving petitioner’s opposition to the original MTA and/or after receiving the PTAB’s preliminary guidance.
The preliminary guidance will discuss whether there is a reasonable likelihood that the MTA meets statutory and regulatory requirements, and whether the petitioner (on the record before the PTO, including any opposition to the MTA and accompanying evidence) establishes a reasonable likelihood that the substitute claims are unpatentable. The preliminary guidance is not a decision by the PTAB, is not binding on the PTAB, and is not subject to a request for rehearing or judicial review.
As under the existing rules, in order to meet the statutory and regulatory requirements, an MTA must, among other things:
- Propose a reasonable number of substitute claims
- Propose substitute claims that do not enlarge the scope of the claims of the challenged patent or introduce new subject matter
- Respond to a ground of unpatentability involved in the trial
- Set forth written description support for each substitute claim
Alternatively, a patent owner may submit a revised MTA after receiving petitioner’s opposition to the original MTA and/or after receiving the preliminary guidance. A revised MTA includes one or more new proposed substitute claims in place of previously presented substitute claims. A revised MTA also may include substitute claims, arguments or evidence previously presented in the original MTA, but may not incorporate any material by reference from the original MTA. Amendments, arguments and/or evidence provided in a revised MTA must be responsive to issues raised in the preliminary guidance and/or petitioner’s opposition to the MTA.
If the patent owner chooses to file a revised MTA, the petitioner may file an opposition to the revised MTA and preliminary guidance. The patent owner may file a reply to the opposition, and petitioner may file a corresponding sur-reply. Upon the filing of a revised MTA, the PTAB will issue a new scheduling order to accommodate the above-noted briefing. The PTAB will maintain the 12-month statutory deadline for a final written decision, however.
The PTO is instituting the pilot program in response to comments from the public. As of January 2019, less than 10 percent of MTAs filed under the AIA were granted by the PTAB. Practitioners believe that participation in the pilot program will increase the number of MTAs granted. The PTO is planning to reassess the pilot program in about one year. The PTO may terminate, continue or modify the pilot program at any time.