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The United States Patent and Trademark Office recently issued a Notice of Proposed Rulemaking seeking to revise its rules on amendment practice under the America Invents Act. Specifically, the Office is proposing to make permanent certain provisions of their 2019 motion to amend pilot program, which is currently set to terminate in September 2024.
In post-grant proceedings before the Patent Trial and Appeal Board, patent owners can seek to amend their claims by filing a motion to amend containing proposed substitute claims, subject to an array of threshold requirements. In the event the Patent Trial and Appeal Board finds the originally challenged claims unpatentable on the grounds raised the petition, the Board can subsequently evaluate the patentability of the proposed substitute claims. However, since the passage of the America Invents Act, the success rate of such motions has been minimal.
Under the motion to amend pilot program, a patent owner has the ability to request feedback on proposed substitute claims before the final written decision phase in two ways. In the first – the patent owner could request in its motion preliminary guidance from the Patent Trial and Appeal Board, which includes “an initial discussion about whether there is a reasonable likelihood that the original motion to appeal meets statutory and regulatory requirements for said motion and whether the petitioner (or the record then before the Office, including any opposition to the motion and accompanying evidence) establishes a reasonable likelihood that the substitute claims are unpatentable.” This preliminary guidance is not binding on the Patent Trial and Appeal Board, however, and the Board may also consider “new grounds of unpatentability discretionarily raised by the Board, together with citations to the evidence of record supporting those new grounds.”
Additionally, a patent owner may file a revised motion to amend “after receiving a petitioner's opposition to the original motion or after receiving the Board's preliminary guidance (if requested)” which contains new claim amendments responsive to issues raised in the petitioner’s opposition or the Patent Trial and Appeal Board’s preliminary guidance. A patentee is not required to exercise either option, however, and may continue with standard practice prior to the program. Supported by a 2023 U.S. Patent and Trademark Office Study, the Notice reports that “during the motion to amend pilot program study period, 24% of final determinations had at least one proposed substitute claim granted entry, as opposed to 14% of final determinations prior to the pilot program” - a near-doubling in acceptance of amended claims. Interestingly, the U.S. Patent and Trademark Office reported most favor towards the pilot program by patentees in computer and engineering fields.
This recent Notice therefore seeks to cement these options into regular motion to amend practice; however, in response to concerns raised throughout the program, the USPTO proposes rule language granting the Patent Trial and Appeal Board discretion to extend relevant motion to amend-deadlines for good cause. The Notice further proposes to reinforce the Board’s unbound discretion to sua sponte raise patentability challenges to proposed claim amendments, contrary to the Boards’s currently precedential Hunting Titan decision.
The deadline for submitting comments is May 3, 2024. In the end, though the motion to amend pilot program did not result in a sizable uptick in Patent and Trial Board amendments, the U.S. Patent and Trademark Office clearly found the benefits of the program outweigh any drawbacks and provide an improved process for patent owners seeking to emerge from Board proceedings with valid, tested claims.
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