USPTO requests comments regarding Motion to Amend Pilot Program and related rules before the PTAB

The U.S. Patent and Trademark Office (USPTO) announced a request for comments (RFC) in the Federal Register seeking public input on the Motion to Amend (MTA) Pilot Program and the rules of practice to allocate the burden of persuasion on motions to amend in trial proceedings before the Patent Trial and Appeal Board (PTAB) (MTA burden-allocation rules). The MTA Pilot Program provides a standardized framework of MTA procedures that include the option to provide the parties with the Board’s preliminary guidance on the merits of the MTA and an additional option for a revised MTA, while reasonably fitting these options within the one-year statutory period from institution to a final written decision.

Specifically, we’re seeking public input on whether the MTA Pilot Program procedures should be made permanent, and if so, whether any modifications would be beneficial. We’re also inviting input on the practical effects of the MTA burden-allocation rules, and whether modifications to the rules or additional guidance on implementing the rules, would be beneficial. Additionally, we’re requesting input on whether the PTAB should have broader authority to raise sua sponte grounds in the MTA process.

“The MTA is critical to our mission at the USPTO,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal. “Your input is essential and helps us to improve the MTA Pilot Program—we’re looking forward to reading your comments and suggestions.”

This RFC is part of our broader effort to hear from and respond to stakeholder feedback regarding PTAB practices in preparation for notice-and-comment rulemaking.

We are accepting comments through Friday, July 21, 2023 . You can submit comments through the Federal eRulemaking Portal.