ï‚· The new procedures allow a patent owner to file a motion to amend six weeks after institution and
the petitioner to respond six weeks thereafter. One month later, the PTAB will provide a non-
binding preliminary decision.
ï‚· The patent owner may revise its motion to amend if the PTAB indicates that the motion is not
likely to prevail.
ï‚· The deadline for comments on the new procedures is December 14, 2018. The USPTO
â€œanticipates that it will implementâ€ the new procedures â€œshortly after the comment deadline.â€
ï‚· The new procedures will apply to all proceedings instituted after the effective date.
On October 29, 2018, the United States Patent and Trademark Office (USPTO) published a Request for
Comments regarding a â€œpilotâ€ program that revamps motion to amend procedures for Inter Partes Review,
Post-Grant Review, and Covered Business Method Review proceedings (collectively, PTAB proceedings)
before the Patent Trial and Appeal Board (PTAB).
The USPTO stated in its Request that it â€œanticipates that it will implement the pilot program shortly after
the comment deadlineâ€ on December 14, 2018. Though characterized as pilot program, the proposed
procedures are not optional. The program is a pilot only in that it will expire after â€œat least one yearâ€ if not
The new procedures provide for a preliminary non-binding decision on a patent ownerâ€™s proposed
amendments after a first round of briefing. If the PTAB finds that the motion is likely to succeed, the
petitioner files a reply and the patent owner files a surreply. The PTAB will then decide the motion to
amend in its final written decision.
But if the PTABâ€™s preliminary decision indicates that the motion to amend is unlikely to succeed, the
patent owner may revise its motion to amend, after which follows a full round of briefing (opposition, reply,
and surreply). Instead of revising its motion, the patent owner may elect to reply to the petitionerâ€™s
Latham & Watkins October 30, 2018 | Number 2401 | Page 2
opposition and the PTABâ€™s preliminary decision, after which the petitioner may file a surreply. In either
case, the PTAB will decide the motion to amend in its final written decision.
The USPTO is seeking to â€œenhance the effectiveness and fairnessâ€ of its motion to amend procedure after
reviewing five years of data and comments solicited in 2014 and 2015, as well as the Federal Circuitâ€™s en
banc decision in Aqua Products in 2017.1
According to the USPTO, less than 10% of all PTAB trials to date included a motion to amend. Only 4%
of the motions decided so far have been fully successful, another 6% were granted in part, and 90% were
denied in full. In Aqua Products, the Federal Circuit rejected the PTABâ€™s practice of requiring the patent
owner to demonstrate the patentability of its amended claims. In response, the PTAB issued an
â€œinformativeâ€ decision requiring a petitioner to demonstrate unpatentability of amended claims and
updated the practice guide to give the petitioner a surreply to support its opposition to the amendment.
While recent data indicate that the number of motions to amend might be increasing, the USPTO is
exploring whether a preliminary decision by the PTAB â€œmight prove helpful in a [PTAB] trial amendment
The New Motion to Amend Procedures
Under the new procedures, the PTAB will issue a preliminary non-binding decision on a motion to amend
after a first round of briefing. The schedule diverges after that depending on how the PTAB views the
merits of the motion. If the PTAB finds that the motion is likely to succeed, the petitioner submits a reply to
the PTABâ€™s decision and the patent owner submits a surreply:
But if the PTAB finds that the motion is unlikely to be granted, the patent owner may either reply to the
decision or revise its motion to amend and begin another round of briefing:
The new motion to amend process will require significantly more briefing in a compressed schedule. The
parties no longer have three months to file and three months to oppose the motion to amend. Instead, the
patent owner has six weeks to file a motion to amend, and the petitioner has six weeks to find any
needed prior art and formulate its opposition. After the preliminary decision, the patent owner has just one
month to decide whether to revise its motion to amend, and the petitioner has just one month to oppose
the revised claim amendments.
Latham & Watkins October 30, 2018 | Number 2401 | Page 3
The timeline below illustrates how the new motion to amend briefing fits into the principal briefing
schedule. Under the old procedure, the patent owner filed its motion to amend after institution at the same
time it filed its patent owner response to the petition. The petitionerâ€™s opposition to the amendment was
due at the same time as the petitionerâ€™s reply in support of its petition.
In contrast, the patent owner now moves to amend before it files its principal response to the petition, and
the petitioner opposes that amendment before seeing the patent ownerâ€™s arguments against the art in the
petition. The new procedure also allows cross-examining the opposing expert only after the preliminary
decision. As a result, a patent ownerâ€™s preliminary motion to amend and the petitionerâ€™s preliminary
opposition will not benefit from any admissions the parties might obtain.
Although the PTAB is seeking comments on whether the parties may jointly seek to opt out of the new
procedures, the currently proposed pilot program will apply to all PTAB proceedings instituted after the
effective date, which could be before the end of 2018.
Other Topics for Comments
The USPTO is seeking input on several topics in addition to the details of above-described process,
including comments regarding the ultimate burden of persuasion for a motion to amend. In Aqua
Products, the Federal Circuit held that the USPTO had not adopted a rule requiring the patent owner to
demonstrate the patentability of its amended claims. Absent such a rule that might be entitled deference,
the USPTO could not place that burden on the patent owner. The USPTO is now asking the public to
weigh in on whether it should engage in rulemaking to allocate the burden of persuasion, as suggested by
The USPTO is also seeking comments regarding its ability to find amended claims unpatentable for
reasons other than those set forth by the petitioner. As discussed, the petitioner currently bears the
burden of demonstrating the unpatentability of any amended claims. If the petitioner is no longer
participating in the proceeding, the new procedures allow the PTAB to ask a patent examiner to develop
an advisory report addressing the proposed amendments. The examinerâ€™s report may include an
assessment of prior art found by the examiner and the examinerâ€™s consideration of the prior art already of
Latham & Watkins October 30, 2018 | Number 2401 | Page 4
record. The USPTO is therefore asking for the publicâ€™s input on the type and extent of assistance a patent
examiner might provide and in defining the situations when the PTAB should be allowed to find amended
claims unpatentable for reasons other than those set forth by the petitioner.
Once effective, the USPTOâ€™s new motion to amend procedures will likely have far-reaching effects on
practice before the PTAB. Current and potential patent litigants, whether patent owners or petitioners,
should carefully review the USPTOâ€™s Request for Comments and consider providing comments by the
December 14, 2018 deadline.
Potential parties and parties to a PTAB proceeding filed in the past four months should also review the
proposal with their counsel to assess the strategic impact of these sweeping changes.
Latham & Watkins will promptly provide further analysis once the new motion to amend procedures
Latham & Watkins October 30, 2018 | Number 2401 | Page 5
If you have questions about this Client Alert, please contact one of the authors listed below or the Latham
lawyer with whom you normally consult:
Bob Steinberg email@example.com +1.202.637.2301 Washington, D.C. Lisa K. Nguyen firstname.lastname@example.org +1.650.470.4848 Silicon Valley Giri Pathmanaban email@example.com +1.650.470.4851 Silicon Valley Jonathan M. Strang firstname.lastname@example.org +1.202.637.2362 Washington, D.C.
You Might Also Be Interested In
Webcast: Keeping Tabs on the PTAB
Video: PTAB Spotlight: What Petitioners and Patent Owners Need to Consider Post Aqua
Aqua Products Levels the Playing Field at the PTAB
Video: PTAB Spotlight: Making Winning Arguments on Appeal From the PTAB at the Federal Circuit
Client Alert is published by Latham & Watkins as a news reporting service to clients and other friends.
The information contained in this publication should not be construed as legal advice. Should further
analysis or explanation of the subject matter be required, please contact the lawyer with whom you
normally consult. The invitation to contact is not a solicitation for legal work under the laws of any
jurisdiction in which Latham lawyers are not authorized to practice. A complete list of Lathamâ€™s Client
Alerts can be found at www.lw.com. If you wish to update your contact details or customize the
information you receive from Latham & Watkins, visit https://www.sites.lwcommunicate.com/5/178/forms-
english/subscribe.asp to subscribe to the firmâ€™s global client mailings program.
1 Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir.2017) (en banc). See Latham & Watkinsâ€™ Client Alert â€œAqua Products Levels
the Playing Field at the PTAB,â€ available at https://www.lw.com/thoughtLeadership/LW-Aqua-Products-Levels-the-Playing-Field-