Patent and Trademark Office April 2019 – Federal Register Recent Federal Regulation Documents

The United States Patent and Trademark Office (``USPTO'' or ``Office'') provides notice of information regarding existing Office practice as it pertains to reissue and reexamination procedures for amending claims available to patent owner during the pendency of a trial proceeding under the America Invents Act (``AIA'') involving the same patent. On October 29, 2018, the Office published a notice requesting comments on proposed modifications to current motion to amend (``MTA'') practice and procedures in AIA trial proceedings. In response to that notice, the Office received a number of comments and questions requesting clarification regarding existing reissue and reexamination procedures at the Office available while an AIA trial proceeding, including any appeal, involving the same patent is pending. In response to those comments and questions, this notice provides a summary of current practice regarding reissue and reexamination options in which patent owners may amend claims before and after the Patent Trial and Appeal Board (``PTAB'' or ``Board'') issues a final written decision in an AIA trial proceeding. This notice also provides summary information about factors the Office currently considers when determining whether to stay or suspend a reissue proceeding, or stay a reexamination, that involves a patent involved in an AIA proceeding, and also when and whether to lift such a stay or suspension.