USPTO Seeks Public Comment on Making Motion to Amend Pilot Program Permanent and PTAB’s Sua Sponte Authority

“[A]s of March 2022, patent owner success rates during the motion to amend (MTA) pilot program have dropped to 25%, and MTA filings have actually decreased each year during the course of the pilot program.”

Motion to AmendThe U.S. Patent and Trademark Office (USPTO) today published a request for comments (RFC) in the Federal Register seeking public input on the pilot program for motion to amend (MTA) practice before the Patent Trial and Appeal Board (PTAB). The Office is considering whether to make the MTA pilot program permanent for patent validity trials under the America Invents Act (AIA) and seeks input on the PTAB’s authority to raise grounds sua sponte during the MTA process. The deadline for public comments in response to this RFC is currently set for July 24, 2023.

Despite Better Success Rates, Motion Filings are Down Since MTA Pilot Program Created

The MTA pilot program for AIA proceedings at the PTAB stems back to March 2019, when the Patent Office published a notice of pilot program in the Federal Register announcing that patent owners would have the opportunity to seek preliminary guidance on motions to amend from the Board itself. The pilot program also offered the opportunity for patent owners to file revised MTAs following a petitioner’s brief in opposition to the original motion to amend. Since launching the pilot program, the USPTO has twice extended the date for terminating the program, which is currently set to run through September 16, 2024.

Statistics reported on the use of the PTAB’s motion to amend pilot program show that the program has helped patent owners experience better success rates when filing MTAs to amend patent claims at the center of AIA validity trial challenges. According to data reported by the PTAB as of December 2020, the success rate for motions to amend rose from 14% prior to the establishment of the MTA pilot program up to 36% for those patent owners who availed themselves of either PTAB preliminary guidance or revised MTA filings, or both pilot program options. At that time, commentators expected a modest uptick in MTA filings by patent owners due to the better success outcomes seen by those taking advantage of the pilot program.

However, a more recent data set from the PTAB shows that, as of March 2022, patent owner success rates during the MTA pilot program have dropped to 25%, and MTA filings have actually decreased each year during the course of the pilot program. When the PTAB has denied substitute claims filed in an MTA, 58% of denials resulted from the petitioner challenging validity meeting their burden to show unpatentability of substitute claims, while 16% resulted from the patent owner’s failure to meet statutory or regulatory requirements, with the remainder of denials involving both scenarios. This data also shows that preliminary guidance requests have been popular, requested in 84% of MTA filings under the pilot program, and that receipt of preliminary guidance caused patent owners to revise their MTAs in a larger percentage of cases.

RFC Seeks Input on Board’s Sua Sponte Authority, Burden of Persuasion for Substitute Claims

Along with making the MTA pilot program permanent with any modifications, the USPTO’s RFC also seeks input on the way that burdens of persuasion should be allocated during MTA practice, especially as it relates to patentability grounds raised sua sponte by the PTAB. Under the U.S. Court of Appeals for the Federal Circuit’s 2022 decision in Hunting Titan v. DynaEnergetics Europe, the PTAB does not have a responsibility to sua sponte raise patentability issues during motions to amend. However, the Federal Circuit’s decision in that case expressed concern that confining the Board’s ability to raise such issues during MTA practice undermined the AIA’s intent to reexamine earlier agency decisions.

The burden of persuasion on the patentability of proposed substitute patent claims has been a topic of legal debate since at least the Federal Circuit’s October 2017 en banc decision in Aqua Products v. Matal, which held that petitioners challenging patent validity at the PTAB bore the burden of persuasion on the patentability of proposed substitute claims submitted in an MTA. In addition to its Hunting Titan ruling, the Federal Circuit has issued other decisions since Aqua Products impacting the scope of MTA practice and consequently the scope of a petitioner’s burden of persuasion. For instance, the Federal Circuit’s 2022 precedential decision in American National Manufacturing v. Sleep Number Corp. held that patent owners filing MTAs in response to grounds of patentability raised in an inter partes review (IPR) petition are able to include additional amendments to address patentability issues outside of the 35 U.S.C. § 102 novelty and 35 U.S.C. § 103 obviousness grounds to which IPR proceedings are limited.

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