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ARTICLE · 27 MARCH 2019

The USPTO Creates A Sweeping New Pilot Program For Motions To Amend

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Today, the USPTO released its long-awaited "Notice Regarding a New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before

United StatesIntellectual Property
J. Derek McCorquindale
J. Derek McCorquindale
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Today, the USPTO released its long-awaited "Notice Regarding a New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board" ("Notice"). The Notice is a 36-page document warranting close scrutiny for the changes it potentially introduces into post-grant proceedings, some of which are outlined below. The new pilot program for Motions to Amend ("MTA") will apply to all AIA trial proceedings instituted on or after March 15, 2019 (i.e., formal publication of the Notice in the Federal Register).

New MTA Options for Patent Owners

The pilot program introduces two options not previously available: "The first option is that a patent owner may choose to receive preliminary guidance from the Board on its MTA. The second option is that a patent owner may choose to file a revised MTA after receiving petitioner's opposition to the original MTA and/or after receiving the Board's

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