By Kevin E. Noonan —

The U.S. Patent and Trademark Office today announced a new pilot program relating to motions to amend in post-grant review proceedings (post-grant review, inter partes review, and covered business methods reviews) under the Leahy-Smith America Invents Act.  As set forth in the announcement:

The pilot program provides patent owners with two options not previously available.  The first option is that a patent owner may choose to receive preliminary guidance from the Board on its motion to amend.  The second option is that a patent owner may choose to file a revised motion to amend after receiving petitioner’s opposition to the original motion to amend and/or after receiving the PTAB’s preliminary guidance (if requested).  If a patent owner does not elect either of those options, the motion to amend practice is essentially unchanged from current practice.

The Notice will be published in the Federal Register tomorrow, March 15th (with the preliminary final notice being available today).  Pursuant to the provisions of the Administrative Procedures Act, the public was given the opportunity to provide comments, and the Office reports that it received 49 such comments, from individuals, organizations, and corporations, and adopted some directed to the amount of time a patent owner will have „for certain filings or evidence.”

The pilot program applies to all AIA trials instituted on or after March 15, 2019, and the Office intends to reassess the program within about a year (and of course the notice states that the Office can terminate the program at any time, modify it or continue it with or without modifications depending on feedback (presumably from both APJs and the public) and effectiveness (however that will be assessed).

The notice emphasizes that little will change for patent owners who do not take advantage of the two new avenues for such motions, except that a patent owner will have six weeks to file a reply after receiving an opposition to an original motion to amend (instead of one month), and a petitioner will likewise have six weeks rather than one month to file a sur-reply in response to a reply (as will a patent owner, regardless of whether she files a motion to amend), as set forth in a revised version of the timeline the Office promulgated previously (see „PTO Publishes Draft Altered Procedures for Amendments in AIA Proceedings”):

REVISED MOTION TO AMEND TIMELINE

With regard to the first new provision, the opportunity for the patent owner to receive a preliminary opinion by the PTAB regarding whether the proposed amendments satisfy the statutory requirements, the PTO noted that the majority of the comments received were in favor of this provision, and the majority of the commenters were in favor of the further opportunity provided in these revised rules for the patent owner to provide a revised motion (presumably to overcome any objections or concerns raised in the Board’s preliminary guidance).  As envisioned in these new rules, any such revised motion can include substitute claims, argument, or evidence (including declarations and portions of deposition transcripts for such declarants) but cannot incorporate by reference anything submitted in the original motion to amend.  But „revised [motion to amend] must provide amendments, arguments, and/or evidence in a manner that is responsive to issues raised in the preliminary guidance and/or petitioner’s opposition.”  And the notice further states that the Board will issue a preliminary guidance four weeks after a patent owner files a motion to amend.  The guidance can be provided to the parties in written form or orally, for example, in a conference call) but will in all cases be „relatively brief” and will not be a binding decision nor final agency action; accordingly, guidances are not subject to a request for rehearing or appeal to the Federal Circuit.

The pilot program integrates revised motions to amend within the regulatory landscape by considering Board guidance to be „good cause” for a revised motion to be filed, pursuant to 37 C.F.R. § 42.121(c) and § 42.221(c).

Finally, the notice discusses proposals in comments that the Board should enlist examiners’ assistance in determining whether substitute claims in a motion to amend satisfy the requirements of the statute.  The Board has such discretion, for example, when the petitioner decides not to further participate in an AIA trial after institution.

The last comment and response provide an intriguing glimpse into the (future) possibility of using reissue and reexamination proceedings as an „alternative” to claim amendments in an AIA trial:

Comment 11: In response to the October 2018 RFC, the Office received a number of comments and questions relating to reissue or reexamination as an alternative vehicle for claim amendments.  The comments included requests for clarification regarding existing reissue and reexamination procedures at the Office.

Response: In response to these comments and questions, in a future notice, the Office will separately provide information regarding existing reissue and reexamination options for patent owners, including procedures for options after a petitioner files an AIA petition challenging claims of the same patent, after the Board institutes a trial, and after the Board issues a final written decision.

The notice directs inquiries to Melissa Haapala, Acting Vice Chief Administrative Patent Judge, or Jessica Kaiser, Lead Administrative Patent Judge, by telephone at (571) 272-9797.