The United States Patent and Trademark Office (USPTO) has published a Request for Comments (RFC) about a proposed procedure for motions to amend filed in inter partes reviews, post-grant reviews, and covered business method patent reviews (collectively AIA trials) before the Patent Trial and Appeal Board (PTAB). In essence, the proposal includes: providing the parties with the Board’s initial assessment of the proposed amendment early in the process; providing meaningful opportunity to revise, and oppose, proposed amendments; and ensuring that the amendment process concludes within the 12-month statutory timeline. The proposal is based upon six years of experience conducting AIA trials during which time more than 350 motions to amend have been filed.
A timeline of the proposal can be reviewed here.
Specifically, the USPTO seeks public input on a proposed amendment process that would involve a preliminary non-binding decision by PTAB regarding the merits of a motion to amend. Such information may include whether the motion, in view of petitioner’s preliminary opposition, is reasonably likely to meet statutory and regulatory requirements and whether the proposed substitute claims are reasonably likely to meet patentability requirements. The proposed process would also provide an opportunity for a patent owner to revise, and petitioner to oppose, its motion to amend and proposed substitute claims in view of the preliminary amendment decision. The USPTO also seeks comments on the proposed timelines, designed to ensure completion within 12-months from institution. The USPTO also seeks comments in response to a number of specific questions included in the RFC.
In addition, the USPTO seeks input regarding whether PTAB should continue to allocate the burden of persuasion regarding patentability of substitute claims as set forth in Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082 (Paper 13) (PTAB April 25, 2018) (informative), as well as any comments on motion to amend practice before PTAB generally.
The USPTO seeks written comments on these topics on or before December 14, 2018. Written comments should be submitted to TrialRFC2018Amendments@
The full text of the Request for Comments on the motion to amend proposal is published in the Federal Register.