USPTO Makes Motion to Amend Pilot Permanent in Final Rule

The U.S. Patent and Trademark Office (USPTO) on Tuesday announced a final rule on Motion to Amend (MTA) practice. It largely tracks the March 2024 notice of proposed rulemaking (NPRM) on the topic, making permanent certain aspects of the Motion to Amend (MTA) Pilot program and revising rules around the burden of persuasion governing MTAs. However, the final rule did take into account the six public comments it received on the NPRM via several changes and clarifications.

The MTA pilot program for America Invents Act (AIA) proceedings 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 was last set to run through yesterday, 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 to affirm the PTAB in that case also 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.

As anticipated by the NPRM, today’s final rule de-designates the PTAB’s Hunting Titan decision, which had been marked precedential, upon the effective date of the rule because it is “at odds with the proposed broader authority of the Board to raise grounds sua sponte.” The rule broadens “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.”

As far as comments on the NPRM, the Office took into account three key additional proposals raised: “1) expressly allowing extensions of time for the final written decision and for filing MTA-related briefs, 2) revising the proposed rules to allow petitioner to file a sur-reply, and 3) clarifying the manner in which patent owner identifies written description support for the proposed substitute claims.”

Extensions of Time

The Office ultimately declined to adopt the suggestion on extensions of time, noting that the rules do not modify existing procedures for granting extensions and that “an extension of the final written decision deadline may be granted by the Chief Administrative Patent Judge for good cause, and the deadline may be extended by not more than six months.”

Sur-Replies

With respect to the comment arguing that the rule should expressly provide for a petitioner sur-reply, since the proposed rule was silent on this point, the Office did agree that this language should be added. “The final rule states that the petitioner may file a sur-reply that is limited to responding to the preliminary guidance and/or arguments made in the patent owner’s reply brief,” said the Federal Register Notice (FRN). The sur-reply may not be accompanied by new evidence but “may comment on any new evidence filed with the reply and/or point to cross-examination testimony of a reply witness, if relevant to the arguments made in the reply brief.”

Written-Description Support

A commenter also raised a concern about a potential ambiguity concerning the content of a motion to amend “regarding whether the required support in the original disclosure or earlier-filed disclosure must be set forth in the motion to amend or should be set forth as part of the claim listing.” The final rule clarifies this point by stating that “the written description support for a proposed substitute claim must be set forth in the motion to amend, as opposed to the claim listing.”

Examination Assistance

The Office also revised the proposed rule after considering comments “expressing concern about the narrow circumstances under which examination assistance would be requested.” The NPRM proposed that it 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.” The rule 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.”

Some commenters felt the rule’s requirement for seeking assistance should not be limited “to situations in which no petitioner opposes, or all petitioners cease to oppose a motion to amend,” arguing that “the expertise of examiners in identifying prior art” warrants an expansion of the situations under which assistance may be requested. Thus, “the final rule now states that a lack of opposition would be considered one of the reasons sufficient for the Board to seek examination assistance,” said today’s FRN. This would include situations where the Board “determines that a deficient prior art challenge in an opposition warrants a search for additional prior art.” The FRN continued:

“The ability of the Board to seek examination assistance when warranted, including a prior art search, for amended claims preserves the Office’s goal of ensuring that it adequately evaluates the patentability of claims before issuance.”

Board Discretion to Raise Grounds Sua Sponte

Finally, as to the rule’s changes to discretion of the Board to raise grounds of unpatentability sua sponte, the FRN said it would not implement proposals “to limit the exercise of discretion to raise grounds sua sponte, nor to retain the limit that only ‘readily identifiable and persuasive evidence’ may be relied upon.” Among the reasons for rejecting the suggestion was that the proposed limitations were “similar to those criticized by the Federal Circuit in Hunting Titan,” said the FRN.

The Final Rule will be published in the Federal Register September 18 and becomes effective October 18, 2024.

“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 USPTO Director Kathi Vidal in a statement. “Making the program permanent and revising the burden-allocation rules ensures the USPTO is issuing robust and reliable patents and strengthens the predictability and certainty of post-grant trial proceedings before the PTAB.”