On Friday, March 1, 2024, the Patent and Trademark Office issued a Notice of Proposed Rulemaking relating to motions to amend before the Patent Trial and Appeal Board. The Proposed Rules, if implemented, will make permanent certain provisions of the current Pilot Program for motions to amend.
The Pilot Program allows patent owners to request preliminary guidance from the PTAB, and change the substitute claims in a revised Motion to Amend after receiving the preliminary guidance and initial invalidity grounds from the petitioner, effectively providing the patent owner with two attempts to amend the claims. Motions to amend that are not filed under the Pilot Program do not receive preliminary guidance from the PTAB, and are effectively a one-shot attempt at filing substitute claims that satisfy all threshold requirements for amended claims and are patentable over petitioner's opposition grounds.
Under the Proposed Rules, patent owners will be able to request preliminary guidance like in the Pilot Program. In response to such guidance, the patent owner will have the option to file a revised motion to amend without pre-authorization, or to reply directly to the preliminary guidance. In addition to opposing the original motion to amend and any revised motion, the petitioner will also be allowed to respond to the preliminary guidance.
The Notice also clarifies some lesser-known provisions of the Pilot Program. First, the Office proposes to apply a preponderance of the evidence standard to any new ground of unpatentability that the PTAB raises in its preliminary guidance. Second, the Notice reaffirms the PTAB's authority to have the Office conduct its own prior art search of the substitute claims at the PTAB's request, and the search results may be added to the record. The PTAB may also solicit examination assistance to identify new matter or evaluate other statutory and regulatory requirements. The PTAB had this authority under the Pilot Program, but the Office indicated that to date, the PTAB has not solicited the assistance of patent examiners in addressing a motion to amend. Third, the Notice clarifies that the PTAB has discretion to extend the deadline for a final written decision by up to six months for good cause, which may include complex issues or to accommodate additional papers such as a requested examination search report.
The Notice is scheduled to publish in the Federal Register on Monday, March 4, 2024. Assuming publication occurs as scheduled, the Office will accept comments and feedback from the public through May 3, 2024.
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