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The United States Patent and Trademark Office (USPTO) released a notice of proposed rulemaking looking to update the rules governing amendment practice in trial proceedings under the Leahy-Smith America Invents Act (AIA). The notice looks to make permanent certain provisions of the Office’s motion to amend the pilot program (MTA Pilot Program) and to revise certain rules regarding the burdens of persuasion in connection with motions to amend (MTA). The proposed rule changes would apply to <em>inter partes </em>review (IPR), post-grant review (PGR), and derivation proceedings that implemented provisions of the AIA providing for trials before the Office.

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The first item the USPTO looks to make permanent is the ability of the patent owner to request that the Board issue preliminary guidance on an MTA. The Board’s preliminary guidance typically comes in the form of a short paper issued after the petitioner files its opposition to the MTA. The guidance provides, at minimum, an initial discussion about whether there is a reasonable likelihood that the original MTA meets statutory and regulatory requirements for an MTA and whether the petitioner establishes a reasonable likelihood that the substitute claims are unpatentable. The Board may also discretionally address new grounds of unpatentability with citations to the evidence of record supporting those new grounds. Similar to an institution decision, preliminary guidance on an MTA during an AIA trial will not be binding on the Board.

The second item the USPTO wishes to make permanent is the ability of the patent owner to file, without Board authorization, a revised MTA after receiving the petitioner’s opposition or the Board’s preliminary guidance. When doing so, the revised MTA will replace the original MTA filed earlier in the proceeding.

Finally, the USPTO addressed the burden-allocation rules in relation to MTA practice. The primary burdens remain unchanged. Rather, the proposed changes in this area are focused on allowing the Board to more broadly use its discretion to raise grounds of unpatentability in connection with a proposed substitute claim. When doing so, the new rule also allows that Board to consider all the prior art of record in the current proceeding, all evidence in related proceedings before the Office, and any evidence that a district court can judicially notice under FRE 201. The Office also proposes rules clarifying that the Board may seek examination assistance in situations where no petitioner opposes an MTA.  Such examination assistance may include advisory reports that provide initial discussions as to whether an MTA meets certain statutory requirements, as well as conducting a prior art search at the Board’s request.

The statistics cited by the USPTO reveal that, while adoption of the proposed rule changes will not likely have a large influence on the use of MTAs in trial practice under the AIA overall, the proposed formalized rules will prove useful in instances where an MTA is filed. Specifically, of the 2,832 trials instituted during the lifetime of the MTA Pilot Program, only 9% (264) included an MTA, a rate almost unchanged from trials taking place before the MTA Pilot Program was put into place (10% of trials before the MTA Pilot Program included an MTA). With that said, where MTAs were filed, 88% (232) included a request for preliminary guidance. Still further, of those 232 trials with an MTA requesting preliminary guidance, 72%  (168) filed either a Patent Owner Reply (41) or a revised MTA (127). In sum, while MTAs may continue to be utilized in a minority of  AIA trials, when one is employed the new rules will be a welcome tool to those who do file an MTA.

Comments on the proposed rules regarding MTAs may be submitted through the Federal eRulemaking Portal at <a href="https://www.regulations.gov">https://www.regulations.gov</a>. The final day to submit comments is May 3, 2024.

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Notice of Proposed Rulemaking for Motion To Amend (MTA)

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