USPTO Proposes Rules to Implement Motion to Amend Pilot Provisions

The U.S. Patent and Trademark Office (USPTO) today published a Federal Register Notice (FRN) announcing a notice of proposed rulemaking (NPRM) that would make permanent certain aspects of the Motion to Amend (MTA) Pilot program and revise rules around the burden of persuasion governing MTAs.

The MTA pilot program for America Invents Act (AIA) proceedings at the Patent Trial and Appeal Board (PTAB) stems back to March 2019, when the Office published a notice of pilot program in the Federal Register announcing that patent owners would have the opportunity to seek preliminary guidance on MTAs 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.

In May of last year, the Office published a request for comments (RFC) in the Federal Register seeking public input on the pilot program and said it was considering whether to make the program permanent. The RFC also sought input on the PTAB’s authority to raise grounds sua sponte during the MTA process. 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.

An August 2023 MTA Study conducted by the USPTO found that of the 264 total pilot MTAs filed, 88% included requests for preliminary guidance from the PTAB. As a result of the popularity of that option and based on public comment, the Office is now proposing to implement the two options on the MTA program, i.e.: 1) requesting preliminary guidance and (2) filing, without pre-authorization, a revised MTA. The Office is also proposing language clarifying that the Board may extend deadlines under the MTA timeline if needed.

While the May 2023 RFC sought comments on whether reexamination and reissue were better options for amending claims in AIA proceedings compared with the MTA process, today’s NPRM did not make any changes to current guidance on those procedures.

The NPRM also proposes changes around 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. Today’s NPRM proposes to de-designate the Hunting Titan decision upon the effective date of the final rule because it is “at odds with the proposed broader authority of the Board to raise grounds sua sponte,” according to the NPRM. The rule would “broaden the body of evidence that the Board may consider and make of record, to now include the entire evidence of record in the proceeding, without limitation, in accordance with Nike, Inc. v. Adidas AG.

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.

The proposed rules would “favor of the Board’s authority to consider the entirety of the art of record and to request examination assistance in an appropriate manner when justified by circumstances.” They also would implement the current MTA pilot program practice of allowing the Board to seek examination assistance in certain circumstances, such as “when the petitioner ceases to participate altogether in an AIA trial in which the patent owner files an MTA and the Board nevertheless exercises its discretion to proceed with the trial thereafter.” According to the NPRM:

“The proposed rule confirms the Board’s discretion to seek examination assistance by clarifying that the Office may conduct a prior art search at the Board’s request when no petitioner opposes or all petitioners cease to oppose an MTA.”

“Making the [MTA Pilot] program permanent strengthens the predictability and certainty of post-grant trial proceedings before the Board,” said USPTO Director Kathi Vidal in today’s announcement of the NPRM.

Comments can be submitted through the Federal eRulemaking Portal until May 3, 2024.

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Author: stuartmiles
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