New Pilot Program Concerning Motions to Amend

The United States Patent and Trademark Office (USPTO) has published a notice of a pilot program for motion to amend practice and procedures in trial proceedings under the America Invents Act (AIA) before the PTAB. 

The pilot program provides patent owners with two options not previously available. The first option is that a patent owner may choose to receive preliminary guidance from the Board on its motion to amend. The second option is that a patent owner may choose to file a revised motion to amend after receiving petitioner’s opposition to the original motion to amend and/or after receiving the PTAB’s preliminary guidance (if requested). If a patent owner does not elect either of those options, the motion to amend practice is essentially unchanged from current practice. The notice sets forth the details of the pilot program, including motion to amend procedures that will be in effect for the duration of the pilot program.  

The full text of the notice is published in the Federal Register

As of the closing date for comments (December 21, 2018), the USPTO received a total of 49 comments from individuals, corporations, and associations in response to its October 29, 2018, request for comments (RFC) on proposed procedure for motions to amend in AIA trials. The USPTO carefully considered all of the comments to the RFC when developing the pilot program. For example, several comments suggested the USPTO reconsider the timelines of due dates presented in the RFC. In response to this comment, the USPTO modified the proposal in the RFC to provide parties more time to prepare certain filings and evidence, among other things. The USPTO made other minor revisions as reflected in the final notice, and otherwise provides responses to the comments received as appropriate.