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ARTICLE · 28 MARCH 2019

PTAB Initiates Motion To Amend Pilot

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On October 29, 2018, the Office published a request for comments on a proposed procedure for motions to amend filed in inter partes reviews, post-grant reviews, and covered business method patent reviews before the PTAB.

United StatesIntellectual Property
Matthew Johnson
Matthew Johnson
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On October 29, 2018, the Office 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 Office received 49 comments in response to this RFC as of December 21, 2018 (the closing date for comments). The majority of comments supported the Office taking action in relation to MTA practice and procedures in AIA trials. Several comments suggested that the Office should reconsider the timelines of due dates presented in the initial RFC. Other comments suggested further revisions, discussed in greater detail below.

This notice provides information relating to the pilot program for a new MTA practice in response to the stakeholder comments received. As discussed below, the pilot program provides a patent owner with two options not previously available. The first option is that a patent owner may choose to

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