USPTO Extends Motion to Amend Pilot Program | Rothwell, Figg, Ernst & Manbeck, P.C.
On October 4, 2022, the United States Patent and Trademark Office (USPTO) announced that it would be extending the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal Board (PTAB) for a second time—now set to run through September 16, 2024.[1]
The MTA Pilot Program was initiated on March 15, 2019, following a 5-month period during which the USPTO sought written public comments on a proposed amendment process in AIA trials. The proposed amendment process would involve preliminary guidance from the PTAB on the merits of a MTA and provide an opportunity for a patent owner to file a revised MTA.[2]
The Pilot Program provides two options not previously available: (1) a patent owner may choose to receive preliminary guidance from the Board on a MTA; and (2) a patent owner may choose to file a revised MTA after receiving petitioner’s opposition to the original MTA and/or after receiving the Board’s preliminary guidance (if requested). See id.
Under option (1), the preliminary guidance from the Board typically will be in the form of a short paper (or oral guidance provided in a conference call) that provides preliminary, non-binding guidance from the Board to the parties about the MTA. The focus of the preliminary guidance will be the limitations added in the patent owner’s MTA—notably, it will not address the patentability of the originally challenged claims. See id.
Under option (2), a revised MTA includes one or more new proposed substitute claims in place of previously presented substitute claims. A revised MTA is required to provide amendments, arguments, and/or evidence in a manner that is responsive to the issues raised in the preliminary guidance and/or petitioner’s opposition to the MTA. Additionally, a revised MTA may also include substitute claims, arguments, or evidence previously presented in the original MTA—notably, it may not incorporate any material by reference from the original MTA. See id.
To note, the MTA Pilot Program is optional. If the patent owner so wishes, they are able to pursue a MTA in effectively the same way as the unaltered, pre-Pilot Program process—i.e., if a patent owner does not elect to receive preliminary guidance or to file a revised MTA, the AIA practice is essentially unchanged from the practice prior to the implementation of the MTA Pilot Program. The only slight difference is that the due dates for certain later-filed papers will be extended slightly compared to the prior rules. See id.
The USPTO has published the results of the MTA Pilot Program through March 31, 2022. A few highlights are shown below:[3]
Graph V above depicts the final outcomes of 434 pre-pilot and pilot MTAs that the Board substantively decided. Graph VI above depicts the final outcomes of the pilot MTAs that the Board decided, and reveals an uptick in the percentage granted.
Graph VII above further depicts the uptick in grant rate (calculation includes both granted and granted-in-part).
Graph XIII above compares a patent owner’s next filing based on whether the pilot MTA requested preliminary guidance. As expected, a patent owner is much more likely to file a revised MTA after receiving preliminary guidance compared to not receiving preliminary guidance.
In sum, the results of the study indicate an increased filing of MTAs and revised MTAs following preliminary guidance, as well as increased grant of MTAs during the MTA Pilot Program period.
The USPTO is further considering making the MTA Pilot Program permanent through notice-and-comment rulemaking, subject to stakeholder feedback and suggestions on the program and on amendment practice generally. Given the previous extensions of the program, it is likely that the USPTO will adopt a more permanent form of the MTA Pilot Program.
[1] See Notice Regarding Extension of the Patent Trial and Appeal Board Motion to Amend Pilot Program, 87 FR 60134 (Oct. 4, 2022).
[2] See Request for Comments on MTA Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 83 FR 54319 (Oct. 29, 2018); see also Notice Regarding a New Pilot Program Concerning Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 84 FR 9497 (Mar. 15, 2019).
[3] See Report on Motion to Amend Study (updated Mar. 2022).
