USPTO Finalizes Motion to Amend Pilot as Permanent Rule
The U.S. Patent and Trademark Office (USPTO) has announced a major development in patent law, finalizing a rule that makes the Motion to Amend (MTA) Pilot program permanent. This final rule not only makes certain aspects of the MTA program permanent but also revises rules related to the burden of persuasion that govern MTAs. The rule largely follows the March 2024 notice of proposed rulemaking (NPRM), with some adjustments based on public feedback. This marks a significant shift in how post-grant proceedings are handled before the Patent Trial and Appeal Board (PTAB), strengthening patent owners’ ability to amend claims during inter partes reviews (IPRs).
History of the MTA Pilot Program-
The MTA Pilot program was initially introduced in March 2019 as part of America Invents Act (AIA) proceedings. The program allowed patent owners to seek preliminary guidance from the PTAB on motions to amend, offering a novel avenue for refining patent claims. Under the program, patent owners could also file revised MTAs after receiving opposition briefs from petitioners. Originally set to expire, the pilot program was extended twice, with the most recent extension running until September 16, 2024. Now, with this final rule, the pilot has become a permanent fixture.
Public Comments and Changes in the Final Rule-
The final rule incorporates feedback from six public comments received on the NPRM. Among the key changes are clarifications regarding the PTAB’s authority to raise patentability issues sua sponte (on its own initiative), a point of contention that stems from a 2022 decision by the U.S. Court of Appeals for the Federal Circuit in Hunting Titan v. DynaEnergetics Europe. The decision previously limited the PTAB’s ability to raise new grounds of unpatentability during MTA practice. However, the final rule de-designates the Hunting Titan decision, granting the PTAB broader authority to raise issues and consider the entire record of evidence in proceedings, as affirmed in Nike, Inc. v. Adidas AG.
Key Provisions in the Final Rule-
- Extensions of Time
One proposal from the public sought extensions of time for the final written decision and MTA-related briefs. However, the USPTO declined to adopt this suggestion, noting that existing rules already allow for extensions by the Chief Administrative Patent Judge for good cause. Extensions will continue to be granted under the current framework, with no change to the six-month limit.
- Sur-Replies Allowed
A significant revision in the final rule is the allowance for sur-replies by petitioners. While the proposed rule was silent on this issue, the final rule explicitly permits petitioners to file sur-replies in response to preliminary guidance or arguments raised in the patent owner’s reply brief. However, these sur-replies cannot introduce new evidence, though they may comment on new evidence from the patent owner’s reply and relevant cross-examination testimony.
- Written-Description Support
Another point of concern in the public comments involved the level of detail required for written-description support in substitute claims. The final rule clarifies that the required support must be set forth in the motion to amend itself, rather than the claim listing. This clarification aims to eliminate ambiguity and ensure that patent owners provide sufficient written-description support for their proposed substitute claims.
- Examination Assistance Expanded
A notable revision in the final rule relates to the Board’s ability to seek examination assistance. Initially, the NPRM limited such assistance to cases where the petitioner ceases participation in the trial. However, public commenters advocated for broader use of examination assistance, citing the expertise of examiners in identifying prior art. In response, the final rule now allows the Board to seek examination assistance even in cases where a petitioner continues to oppose, especially when the Board finds the opposition to be deficient in challenging prior art. This change enhances the robustness of the MTA process by allowing the Board to search for additional prior art when necessary.
Board’s Authority to Raise Grounds Sua Sponte-
The final rule also addresses the PTAB’s discretion to raise unpatentability grounds sua sponte. The USPTO rejected proposals that would limit this discretion, as well as suggestions to restrict the evidence that could be relied upon to “readily identifiable and persuasive evidence.” The USPTO argued that such limitations would be too restrictive and counter to the intent of the AIA, echoing criticisms raised by the Federal Circuit in Hunting Titan.
Implementation and Impact-
The new rule will be officially published in the Federal Register on September 18, 2024, and will become effective on October 18, 2024. According to USPTO Director Kathi Vidal, the permanent implementation of the MTA Pilot program will provide patent owners with an efficient way to receive feedback on amended claims, preserving their patent rights while ensuring the issuance of robust and reliable patents. The changes to burden allocation and the broader authority of the PTAB aim to strengthen the predictability and fairness of post-grant trials.
Conclusion-
With the permanent adoption of the MTA Pilot program and key rule changes, patent owners can expect increased clarity and flexibility in amending claims during AIA trials. The USPTO’s revisions reflect its commitment to fostering innovation while ensuring a fair balance between patent owners and challengers in the post-grant review process. These changes will likely have a long-lasting impact on how patent amendments are handled, making the system more robust and transparent.
