March 26, 2019

USPTO Creates Pilot Program for New Motion to Amend Practice

The U.S. Patent and Trademark Office has announced a pilot program for motions to amend in trial proceedings under the American Invents Act, effective for petitions instituted on or after March 15, 2019. The pilot program will be reassessed in a year and may run indefinitely.

Unlike the previously proposed changes to the motion to amend practice, participation in the pilot program is optional, and the existing motion to amend practice will remain in place. The pilot program  provides two new options for amending claims in post-grant proceedings: (1) The patent owner can request a “preliminary guidance” in its motion to amend (MTA), which issues after the petitioner’s opposition to the MTA and previews the Patent Trial and Appeal Board’s assessment of the merits and completeness of the MTA; and (2) whether or not the patent owner requests this preliminary guidance, in response to the petitioner’s opposition to the MTA, the patent owner can submit a revised MTA. 

The existing MTA practice remains essentially the same: The patent owner now has six weeks for its reply to the petitioner’s opposition to the MTA, and the petitioner has six weeks for its sur-reply. To conform this schedule to the trial schedule for post-grant review proceedings in which no MTA is filed, patent owners will now have six weeks to file a sur-reply to the petitioner’s reply to the patent owner response. See Appendix 1A of the USPTO announcement.

Preliminary Guidance

The new, optional preliminary guidance is a nonbinding, nonappealable decision that is issued after the petitioner’s opposition brief, which may be requested by the patent owner in its MTA. The preliminary guidance will provide an initial discussion as to whether there is a reasonable likelihood the MTA meets statutory and regulatory requirements. The preliminary guidance also will address whether the petitioner has established a reasonable likelihood the substitute patent claims are unpatentable. The patent owner may respond to this preliminary guidance in its reply to the petitioner’s opposition brief, which can include new evidence, including declarations. The petitioner may then sur-reply.

While the PTAB notice indicates that the preliminary guidance will be either a short paper or oral guidance provided in a conference call, Acting Deputy Chief Administrative Patent Judge Jacqueline Bonilla suggested that the guidance will typically be a short paper that will probably be a form or table to give very preliminary nonbinding information. Any discussion in the preliminary guidance of whether substitute claims are likely unpatentable will focus on the substitute limitations and will make assumptions about the limitations that were in original claims based on how those limitations were addressed at institution.

Revised Motions to Amend

If the patent owner receives the petitioner’s opposition to its MTA and/or the preliminary guidance, the patent owner may elect to file a revised MTA (rMTA). The rMTA includes one or more new proposed substitute claims in place of previously presented substitute claims to address issues identified in the preliminary guidance and/or the petitioner's opposition. While the rMTA may provide new arguments and/or evidence as to why the rMTA meets statutory and regulatory requirements for an MTA, as well as arguments and evidence relevant to the patentability of substitute claims pending in the rMTA, those arguments and evidence must be responsive to the preliminary guidance and/or the petitioner’s opposition to the MTA and cannot include any material unrelated to issues raised in the opposition or preliminary guidance.

An rMTA may also include substitute claims, arguments, or evidence presented in the original MTA, but cannot incorporate by reference any material from the original MTA. Like MTAs, rMTAs are contingent on the unpatentability of the original claims unless the patent owner indicates otherwise or cancels the original claims; however, the substitute claims of the rMTA cannot be contingent on the patentability of the substitute claims in the original MTA. The opposition and the reply can include new evidence that responds to issues raised in the preliminary guidance, or the corresponding rMTA or opposition. Filing an rMTA initiates a new trial schedule. See Appendix 1B of the USPTO announcement.

Impact on PTAB Practice

The use of rMTAs will raise practical considerations for the use of experts. As discussed above, new evidence may be introduced in a patent owner reply to an MTA or by the petitioner and patent owner in response to an rMTA. For rMTAs, the compressed schedule requires the parties to confer immediately after filing papers to schedule depositions, and it should be noted that the USPTO has warned it will not adjust the schedule absent “extraordinary circumstances.” Often, parties will have to make a declarant available for deposition within a week of filing the declaration.

Another consequence of the compressed rMTA schedule is that parties may not have the opportunity to object to evidence submitted in responsive briefing. Accordingly, parties should expect to be able to raise motions to exclude only at or after the oral hearing.

The new motion to amend procedures raise new scheduling considerations and have the potential to increase costs of PTAB trials.

Finally, the new procedures have the potential to increase the rate at which motions to amend are filed and the success of those motions.