Mainland Or Mirage: Strategic Considerations For The USPTO's Motion To Amend Pilot Program

For years, many patent owners navigating AIA proceedings have complained that existing procedures prevented them from amending their claims. Seeking to address some of these concerns, the USPTO recently released an optional pilot program for motions to amend (MTA) that applies to AIA trial proceedings instituted on or after March 15, 2019.¹Assuming this program achieves its goal of facilitating claim amendment, both patent owners and petitioners may want to recalibrate their strategies—patent owners on whether to pursue amendments; and petitioners on whether to pursue an AIA challenge in the first place. Legal issues beyond the scope of the claims, like the doctrine of intervening rights, can make the desired destination illusory.