On October 29, 2018, the Patent and Trademark Office published a request for comments on a proposal to establish a new procedure by which patent owners may seek to amend their claims during inter partes review. Comments are due on or before December 14, 2018. The PTO proposes a pilot program implementing the new amendment process to begin shortly after the deadline for comments.
Currently, a patent owner may move to amend once, following institution of inter partes review. A petitioner may respond to such a motion, and the Board rules on whether to allow amendment as part of its final written decision. The Board may authorize an additional motion to amend when "there is good cause showing." 37 C.F. R. 42.121(c) and 42.221(c).
The new process would permit a patent owner to revise its motion to amend following a preliminary, non-binding decision of the PTAB. The new proposal relies upon 35 U.S.C. 316(d)(2) which provides that the Board may permit additional motions to amend "as permitted by regulations prescribed by the Director."
The new proposal would compress the current time frame for filing and responding to a motion to amend. It would provide for a preliminary ruling by the PTAB on the proposed amendment, to which both sides may respond prior to final decision.
Under the proposal, a patent owner would have six weeks following institution in which to file a motion to amend. The petitioner would have an equal amount of time to respond. The PTAB is to issue a preliminary decision within one month regarding the validity of the proposed amended claims.
If the PTAB's preliminary decision is unfavorable with respect to at least one proposed substitute claim, the patent owner could elect to file a reply to the petitioner's opposition. The petitioner would then be accorded the opportunity to file a sur-reply.
Alternatively, the patent owner could revise its motion to amend, proposing new substitute claims. The petitioner then would be entitled to a respond. The patent owner could then reply. The petitioner could then file a sur-reply.
If the patent owner did not respond at all to an unfavorable preliminary decision of the PTAB, the petitioner would still be accorded the opportunity to reply to the preliminary decision and the patent owner could file a sur-reply in response.
If the PTAB's decision indicates that the Board is likely to permit amendment as to all proposed substitute claims, the petitioner would be accorded a right to file a reply to the PTAB's preliminary decision. The patent owner would then be permitted a sur-reply.
The PTO has provided the following timeline to illustrate these various deadlines:
Proposed Timeline for New Motion to Amend Process
If adopted, these procedures are certain to increase the costs of the participants and the burden on the PTAB. No doubt those who comment can be expected to address the practicality (or impracticality) of the Director's proposals.
The PTO has specifically solicited input on the following questions:
- Should the Office modify its current practice to implement the proposal summarized above and presented in part in Appendix A1? Why or why not?
- Please provide comments on any aspect of the proposed amendment process, including, but not limited to, the content of the papers provided by the parties and the Office and the timing of those papers during an AIA trial.
- How does the timeline in Appendix A1 impact the parties' abilities to present their respective cases? If changes to the timeline are warranted, what specific changes are needed and why?
- If the Office implements this proposal, should the Board prepare a preliminary decision in every proceeding where a patent owner files a motion to amend that proposes substitute claims?
- What information should a preliminary decision include to provide the most assistance to the parties in presenting their case? For example, is there certain information that may be particularly useful as the parties consider arguments and evidence to present in their papers, how issues may be narrowed for presentation to the Board, and/or whether to discuss a settlement?
- If the Office implements this proposal, should there be any limits on the substance of the claims that may be proposed in the revised motion to amend? For example, should patent owners be permitted only to add limitations to, or otherwise narrow the scope of, the claims proposed in the originally-filed motion to amend?
- What is the most effective way for parties and the Office to use declaration testimony during the procedure discussed above? For example, how and when should parties rely on declaration testimony? When should cross-examination of declaration witnesses take place, if at all, in the process? At what stage of briefing should a party be able to rely on cross-examination (deposition transcripts) testimony of a witness?
- If a petitioner ceases to participate in an AIA trial and the Board solicits patent examiner assistance regarding a motion to amend, how should the Board weigh an examiner advisory report relative to arguments and evidence provided by a patent owner? What type of assistance or information should a patent examiner provide? Should prior art searches by examiners be limited to those relevant to new limitations added to proposed substitute claims and reasons to combine related to such limitations?
- Should the Board solicit patent examiner assistance in other circumstances, and if so, what circumstances? For example, should the Board solicit patent examiner assistance when the petitioner remains in the AIA trial but chooses not to oppose the motion to amend?
- Should a motion to amend filed under the proposed new process be contingent or non-contingent? For purposes of this question, "contingent" means that the Board will provide a final decision on the patentability of a proposed substitute claim only if it determines that a corresponding original claim is unpatentable (as in the current proposal); and "non-contingent" means that the Board will provide a final decision on the patentability of substitute claims in place of determining the patentability of corresponding original claims.
- If the Office implements the proposal in which the Board issues a preliminary decision on a motion to amend, as discussed above, should any additional changes be made to the current default trial schedule to accommodate the new practice?
- What impact would implementing the proposals above have on small or micro entities who participate as parties in AIA trial proceedings?
- Should the Office consider additional options for changing the timing and/or the Board's procedures for handling motions to amend that are not covered by the proposals above? If so, please provide additional options or proposals for the Office to consider, and discuss the advantages or disadvantages of implementation.
- Should the Office consider not proceeding with the pilot program in AIA trials where both parties agree to opt-out of the program?
- Should the Office engage in rulemaking to allocate the burden of persuasion regarding the patentability of proposed substitute claims in a motion to amend as set forth in the Western Digital order? What are the advantages or disadvantages of doing so?
- If the Office continues to allocate the burden as set forth in the Western Digital order, under what circumstances should the Board itself be able to justify findings of unpatentability? Only if the petitioner withdraws from the proceeding? Or are there situations where the Board itself should be able to justify findings of unpatentability when the petitioner remains in the proceeding? What are the advantages or disadvantages?
- If the Office adopts the current proposal including a preliminary decision by the Board on a motion to amend, do the answers to questions 15 and 16 change?