October 26, 2018
Today the USPTO released a request for comments on Motion to Amend Practice and Procedures in Post-Grant Proceedings under the America Invents Act before the Patent Trial and Appeal Board (PTAB). The request also seeks input addressing whether petitioners should bear the burden of proving unpatentability of amended claims. These amended procedures will be implemented in a proposed pilot program shortly after the comment deadline of December 14, 2018.
The USPTO notes that under current procedures, motions to amend have only been pursued in 10% of all post-grant proceedings, and the PTAB has denied 90% of the motions on which it has issued decisions.
Under the revised procedures, the patent owner would have the opportunity to file a motion to amend after institution of the trial. The petitioner would file a response to the motion, and the PTAB would issue a preliminary decision. The preliminary decision would address whether the motion meets statutory and regulatory requirements and whether the amended claims are patentable. The preliminary decision would not be binding on the PTAB.
Two alternative procedures would be available after the preliminary decision. Under the first alternative, if the preliminary decision is unfavorable to the patent owner, the patent owner would have the opportunity to file either a reply or a revised motion to amend. The petitioner would then file a sur-reply or a response to the revised motion, respectively.
Under the second alternative, if the preliminary decision is favorable to the patent owner, the petitioner would have the opportunity to file a reply. The patent owner would then file a sur-reply in response.
Under either alternative, the new procedures allow the PTAB to solicit the assistance of a patent examiner if the petitioner ceases participation in the trial. The examiner would submit a nonbinding advisory report on the patentability of the substitute claims based on evidence already in the record and any art identified in searches by the examiner. The examiner would not conduct an additional search on the original claims or evaluate credibility of witnesses.
The USPTO is seeking comment by December 14, 2018, on numerous topics related to the proposed procedure, including appropriate deadlines for the various briefs to be filed. Fitch Even attorneys will continue to monitor changes to these procedures as the USPTO develops the pilot program.
For more information on this ruling, please contact Fitch Even partner David A. Gosse, author of this alert.
Fitch Even IP Alert®