Extension of the Patent Trial and Appeal Board Motion To Amend Pilot Program, 76091 [2024-21135]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 89, Number 180 (Tuesday, September 17, 2024)]
[Notices]
[Page 76091]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-21135]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2021-0042]


Extension of the Patent Trial and Appeal Board Motion To Amend 
Pilot Program

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
extending the Motion to Amend (MTA) pilot program, initiated on March 
15, 2019, and previously extended up to September 16, 2024. The MTA 
pilot program provides additional options for a patent owner who files 
an MTA before the Patent Trial and Appeal Board (PTAB). In particular, 
the MTA pilot program provides a patent owner who files an MTA with 
options to request preliminary guidance from the PTAB on the MTA and to 
file a revised MTA. The MTA pilot program also provides timelines for 
briefing to accommodate these options.

DATES: Applicable Date: September 17, 2024. Duration: The MTA pilot 
program will run until March 31, 2025, or earlier if replaced by a 
permanent program after notice-and-comment rulemaking. The USPTO may 
extend the MTA pilot program (with or without modification) on either a 
temporary or a permanent basis or may discontinue the MTA pilot 
program, after that date.

FOR FURTHER INFORMATION CONTACT: Miriam L. Quinn, Acting Vice Chief 
Administrative Patent Judge, or Melissa Haapala, Vice Chief 
Administrative Patent Judge at 571-272-9797 ([email protected] or 
[email protected], respectively).

SUPPLEMENTARY INFORMATION: A patent owner in an America Invents Act 
(AIA) trial proceeding may file an MTA as a matter of right. See 35 
U.S.C. 316(d)(1), 326(d)(1). After receiving public feedback about the 
PTAB's MTA practice, including some concerns regarding the low grant 
rate of claim amendments in AIA trial proceedings, in October 2018, the 
USPTO published a Request for Comments in the Federal Register seeking 
written public comments on a proposed amendment process in AIA trials 
that would involve preliminary guidance from the PTAB on the merits of 
an MTA and an opportunity for a patent owner to file a revised MTA. 
Request for Comments on MTA Practice and Procedures in Trial 
Proceedings Under the America Invents Act Before the Patent Trial and 
Appeal Board, 83 FR 54319 (Oct. 29, 2018). The majority of comments 
supported the PTAB issuing preliminary guidance in cases involving an 
MTA and commenters were almost evenly mixed in supporting or opposing 
the opportunity for a patent owner to file a revised MTA.
    On March 15, 2019, in response to these public comments, the USPTO 
issued a Notice detailing the MTA pilot program. 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 FR 9,497 (Mar. 15, 2019). The MTA pilot program 
provides a patent owner with two options not previously available: (1) 
a patent owner may choose to receive preliminary guidance from the PTAB 
on its MTA; and (2) a patent owner may choose to file a revised MTA 
after receiving petitioner's opposition to the original MTA and/or the 
PTAB's preliminary guidance (if requested). If a patent owner does not 
elect either option, then AIA trial practice, including MTA practice, 
is essentially unchanged from the practice prior to the MTA pilot 
program.
    The USPTO has extended the MTA pilot program twice. The first 
extension on September 16, 2021 ran through September 16, 2022, and the 
second extension currently runs until September 16, 2024. The USPTO 
continues to present results of the MTA pilot program yearly, with the 
most recent report based on data up through March 31, 2024, in 
Installment 9 of the Motions to Amend Study. The most recent 
information and statistics related to MTAs are available on the USPTO's 
website at https://www.uspto.gov/patents/ptab/motions-amend-study.
    After four years of experience with the MTA pilot program and 
development of Federal Circuit case law concerning burden allocation in 
the MTA context, the USPTO issued a Request for Comments to seek 
feedback on the public's experience with the program and the burden-
allocation rules that apply to MTAs. See Request for Comments Regarding 
MTA Pilot Program and Rules of Practice to Allocate the Burdens of 
Persuasion on Motions to Amend in Trial Proceedings Before the Patent 
Trial and Appeal Board, 88 FR 33063 (May 23, 2023) (2023 RFC). Then on 
March 4, 2024, after consideration of the received comments and based 
on the experience of the Board with the MTA pilot program, the USPTO 
published a Notice of Proposed Rulemaking concerning Motion to Amend 
Practice and Procedures in Trial Proceedings Under the America Invents 
Act Before the Patent Trial and Appeal Board. 89 FR 15531 (``2024 
NPRM''). The USPTO proposed to revise its rules of practice to provide 
for issuance of preliminary guidance in response to an MTA and to 
provide a patent owner with the option for filing a revised MTA. While 
the USPTO finalizes rules in this regard, the USPTO is extending the 
MTA pilot program for a third time. The MTA pilot program is hereby 
extended through March 31, 2025. The requirements for the MTA pilot 
program remain as set forth in the original Notice without modification 
at this time.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2024-21135 Filed 9-16-24; 8:45 am]
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