USPTO seeks to formalize the Motion to Amend Pilot Program and revise related rules before the PTAB

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Patent Trial and Appeal Board

USPTO seeks to formalize the Motion to Amend Pilot Program and revise related rules before the PTAB

The United States Patent and Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) to formalize certain provisions of the Motion to Amend (MTA) Pilot Program and to revise the rules that allocate burdens in connection with MTAs in trial proceedings before the Patent Trial and Appeal Board (PTAB or Board).

The MTA Pilot Program provides a patent owner who files an MTA with options to request preliminary guidance from the PTAB on the MTA and to file a revised MTA. The program also provides timelines for briefing to accommodate these options.

“Since launching the Motion to Amend Pilot Program in 2019, we have heard from patent owners that it is an efficient and effective way to receive feedback on their amended claims in order to preserve their patent rights,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “Making the program permanent strengthens the predictability and certainty of post-grant trial proceedings before the Board.”

The full text of the NPRM is available in the Federal Register. Stakeholders are encouraged to submit comments through the Federal eRulemaking Portal until May 3, 2024.

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