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ARTICLE · 28 MARCH 2019

PTAB's Motion to Amend Pilot Program: Actual v. Proposed

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The appendices of the notice provides the two below schedules for filing papers relating to the MTA and petition, depending on whether a revised MTA is filed.

United StatesIntellectual Property
Matthew Johnson
Matthew Johnson
Catharina J. Chin Eng
Catharina J. Chin Eng
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To facilitate claim amendments in inter partes, post-grant and covered business method patent reviews (collectively AIA trials), the USPTO on October 29, 2018, published a request for comment ("RFC") on a proposed procedure for filing motions to amend in AIA trials. For our previous discussion of the RFC, see here.

In response to comments, on March 15, 2019, the USPTO issued a notice of a new pilot program for motion to amend ("MTA") practice. See also our report highlighting the features of this program. The pilot program applies to all AIA trials instituted on or after March 15, 2019. The USPTO anticipates reassessing the pilot program in about one year.

The pilot program provides two new options for a patent owner: (1) choose to receive preliminary guidance from the Board on its MTA and (2) choose to file a revised MTA after receiving the petitioner's opposition to the original MTA and/or receiving the Board's preliminary guidance (if requested). Soon after

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