March 19, 2019
On March 15, the USPTO initiated a new pilot program for motions to amend filed during America Invents Act trial proceedings before the Patent Trial and Appeal Board (PTAB). The program provides new procedural options for patent owners attempting to amend claims during inter partes review, covered business method review, or post-grant review proceedings.
The USPTO enacted the pilot program in response to the perception that amending claims in AIA proceedings is too difficult. In data recently published by the USPTO, out of 3,600 completed AIA trials, only 205 motions to amend were decided, with only 8 granted. Under the pilot program, effective for AIA trials instituted on or after March 15, patent owners have two new options: (1) to request preliminary guidance from the PTAB regarding their motion to amend, and (2) to file a revised motion to amend after receiving the preliminary guidance and/or after receiving the petitioner’s opposition.
If a patent owner requests preliminary guidance in its motion to amend, the PTAB will issue a short paper (or in some cases hold a conference call) after the petitioner files its opposition to the motion. The nonbinding guidance will address both whether the motion to amend is reasonably likely to meet the statutory and regulatory requirements and whether the petitioner has established a reasonable likelihood that the substitute claims presented in the motion are unpatentable.
Patent owners will also have the option to file a revised motion to amend after receiving the petitioner’s opposition and/or receiving the PTAB’s preliminary guidance. The revised motion to amend must include one or more new substitute claims in place of previously presented substitute claims. Patent owners may also rely on new arguments and evidence in the revised motion, so long as they are responsive to issues raised in the PTAB’s preliminary guidance or the petitioner’s opposition. After the patent owner files a revised motion to amend, the PTAB will issue a new scheduling order to accommodate the additional briefing. Parties and practitioners should note that the briefing after a revised motion to amend will proceed rapidly, and any depositions of declarants will require significant cooperation between the parties.
If a patent owner declines to pursue either of these new options, the current motion to amend practice during AIA trials remains unchanged, with the exception that the due dates for certain later-filed papers will be extended slightly.
Although there is no set duration for the pilot program, the USPTO has indicated that it will likely reassess the program after one year.
This new pilot program is relevant to parties and practitioners engaged in, or expecting to be engaged in, AIA trial proceedings. The program generally will benefit patent owners by providing meaningful feedback and the ability to correct defects in a patent owner’s motion to amend.
For more information on this program, please contact Fitch Even partner Paul B. Henkelmann, author of this alert.
Fitch Even associate Evan Kline-Wedeen contributed to this alert.
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