United States: Insights From The First Year Of The USPTO's New Motion To Amend Pilot Program

Andrei Iancu, Director of the American Intellectual Property Law Association's 2018 annual meeting, has repeatedly stated his desire to give patent owners greater ability to amend claims during AIA trial proceedings.¹ In March 2019, the USPTO took a step in that direction with its pilot program for motion to amend practice.² An eligible patent owner who chooses to take advantage of the pilot program can receive valuable preliminary guidance from the Board on its motion to amend, and, if desired, can file a revised motion to amend based on that feedback.³ Eighteen months after the pilot program's launch, only a handful of eligible trials have reached final disposition at the Board. In this article, we take a close look at each of these cases to analyze whether and how the Board's preliminary guidance has impacted their outcome-and provide strategic practice tips for both petitioners and patent owners.

HOW THE PILOT PROGRAM WORKS

Under the motion to amend pilot program,⁴ a patent owner is provided "with two options not previously available."⁵ First, the patent owner may elect to receive "preliminary guidance" from the Board on its motion to amend.⁶ Second, after receiving that guidance and/or the petitioner's opposition to the motion, the patent owner "may choose to file a revised" motion to amend.⁷ Both the original and revised motions to amend are presumed to be contingent unless the patent owner indicates otherwise or cancels its original claims.⁸ If the patent owner does not choose to utilize either option under the pilot program, the AIA trial and the motion to amend practice is largely unchanged.⁹

If the patent owner chooses one or both options under the pilot program, however, the AIA trial changes in several ways. One of these changes involves the schedule: if the patent owner elects to file a revised motion to amend, the Board will issue a revised scheduling order that alters certain deadlines.¹⁰ For example, the parties will receive six weeks for filing reply and sur-reply briefs regarding the motion to amend, rather than the typical one-month deadline.¹¹ And, of course, the revised schedule will make time for the Board to issue its preliminary guidance. If requested, the Board is required under the program to provide such guidance within four weeks of the due date for the Petitioner's opposition to the motion to amend.¹²

The USPTO made clear in the Pilot Program Notice that the Board's preliminary guidance is a non-binding, initial assessment of whether, based on the record at that point in the case, (1) there is a reasonable likelihood that the motion meets statutory and regulatory requirements and (2) the Petitioner has established a reasonable likelihood that the proposed substitute claims are unpatentable.¹³ Focusing only on the limitations added in the motion to amend, the guidance does not address the patentability of the original claims or provide any case-dispositive conclusions.¹⁴ In addition, parties cannot request rehearing of the preliminary guidance.¹⁵ With this background in mind, we will now examine the handful of cases that have utilized the pilot program and proceeded to final written decision.

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Footnotes

1. See, e.g., Andrei Iancu, Remarks by Director Iancu at the Am. Intellectual Property L. Ass'n Annual Meeting, USPTO (Oct. 25, 2018), https://www.uspto.gov/about-us/news-updates/remarksdirector-iancu-american-intellectual-property-law-association-annual.

2. Notice Regarding a New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 84 Fed. Reg. 9497 (Mar. 15, 2019) [hereinafter "Pilot Program Notice"].

3. Id.; see also Patent Quality Chat Webinar Series: New pilot program for motions to amend in AIA trial proceedings, USPTO, at 10 (Apr. 9, 2019), https://www.uspto.gov/sites/default/files/documents/Patent%20Quality%20Chat%20Webinar%20Motio ns%20to%20Amend%20PTAB%204_2019.pdf [hereinafter, "Patent Quality Webinar"].

4. This is only a brief summary of the pilot program. For more information, see Pilot Program Notice, supra, n. 2; see also J. Derek McCorquindale, The USPTO Creates a Sweeping New Pilot Program for Motions to Amend, FINNEGAN (Mar. 15, 2019), https://www.finnegan.com/en/insights/blogs/america-invents-act/the-uspto-creates-a-sweeping-newpilot-program-for-motions-to-amend.html.

5. Patent Quality Webinar at 10.

6. Id.

7. Id.

8. Id. at 13.

9. Id. at 11.

10. Id. at 12. For example, under the pilot program, the oral hearing occurs ten months from the institution decision, rather than the typical nine months. Id. at 14. And other briefing deadlines are generally compressed. For example, the Petitioner only receives three weeks to draft its sur-reply to the patent owner's motion to amend, rather than the usual six. Id. at 14. In any event, the final written decision must be issued on or before the statutory deadline-one year after the institution decision. 35 U.S.C. § 316(a)(11).

11. Patent Quality Webinar at 16.

12. Id. at 17.

13. Pilot Program Notice, supra, n. 2.

14. Id.

15. Id.

Originally published in  Chicago-Kent Journal of Intellectual Property on July 12, 2021.

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