The USPTO has published a Request for Comments (RFC) on a proposed procedure for motions to amend filed in inter partes reviews, post-grant reviews, and covered business method patent reviews (collectively AIA trials) before the PTAB. The proposal includes providing the parties with the Board’s initial assessment of the proposed amendment early in the process; providing meaningful opportunity to revise and oppose proposed amendments; and ensuring the amendment process concludes within the 12-month statutory timeline. The proposal is based on six years of experience conducting AIA trials during which more than 350 motions to amend were filed.
Specifically, the USPTO seeks public input on a proposed amendment process that would involve a preliminary non-binding decision by PTAB regarding the merits of a motion to amend. Such information may include whether the motion, in view of a petitioner’s preliminary opposition, is reasonably likely to meet statutory and regulatory requirements and whether the proposed substitute claims are reasonably likely to meet patentability requirements. The proposed process would also provide an opportunity for a patent owner to revise, and a petitioner to oppose, its motion to amend and proposed substitute claims in view of the preliminary amendment decision.
The USPTO also seeks comments on the proposed timelines designed to ensure completion within 12 months from institution, as well as a number of specific questions included in the RFC.
In addition, the USPTO seeks input on whether PTAB should continue to allocate the burden of persuasion regarding patentability of substitute claims as set forth in Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082 (Paper 13) (PTAB April 25, 2018) (informative), as well as any comments on motion to amend practice before PTAB generally.
The USPTO seeks written comments on these topics on or before December 14, 2018. Written comments should be submitted to TrialRFC2018Amendments@uspto.gov.
The full text of the RFC on the motion to amend proposal is published in the Federal Register.