Notice2022-21472
Extension of the Patent Trial and Appeal Board Motion To Amend Pilot Program
Primary source
Metadata and text below are from the Federal Register, a public-domain U.S. government work. Always verify the official published version before relying on it for any legal matter.
Published
October 4, 2022
Issuing agencies
Commerce DepartmentPatent and Trademark Office
Abstract
The United States Patent and Trademark Office (USPTO) is extending the Motion to Amend (MTA) Pilot Program, initiated on March 15, 2019, and first extended on September 16, 2021. The MTA Pilot Program provides additional options for a patent owner who files an MTA in an America Invents Act (AIA) trial proceeding before the Patent Trial and Appeal Board (PTAB). In particular, the program provides a patent owner who files an MTA with options to request preliminary guidance from the PTAB on the MTA and to file a revised MTA. The MTA Pilot Program also provides timelines for briefing to accommodate these options.
Full Text
<html>
<head>
<title>Federal Register, Volume 87 Issue 191 (Tuesday, October 4, 2022)</title>
</head>
<body><pre>
[Federal Register Volume 87, Number 191 (Tuesday, October 4, 2022)]
[Notices]
[Pages 60134-60135]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2022-21472]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2021-0042]
Extension of the Patent Trial and Appeal Board Motion To Amend
Pilot Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (USPTO) is
extending the Motion to Amend (MTA) Pilot Program, initiated on March
15, 2019, and first extended on September 16, 2021. The MTA Pilot
Program provides additional options for a patent owner who files an MTA
in an America Invents Act (AIA) trial proceeding before the Patent
Trial and Appeal Board (PTAB). In particular, the program provides a
patent owner who files an MTA with options to request preliminary
guidance from the PTAB on the MTA and to file a revised MTA. The MTA
Pilot Program also provides timelines for briefing to accommodate these
options.
DATES: Applicability Date: October 4, 2022. Duration: The MTA Pilot
Program will run until September 16, 2024 (or it may end sooner if
replaced by a permanent program after notice-and-comment rulemaking).
The USPTO may further extend the MTA Pilot Program (with or without
modification) on either a temporary or a permanent basis, or may
discontinue the program after that date.
FOR FURTHER INFORMATION CONTACT: Miriam L. Quinn, Acting Vice Chief
Administrative Patent Judge; or Melissa Haapala, Vice Chief
Administrative Patent Judge; at 571-272-9797 (<a href="/cdn-cgi/l/email-protection#f1bc988398909cdfa084989f9fb1848281859edf969e87"><span class="__cf_email__" data-cfemail="87caeef5eee6eaa9d6f2eee9e9c7f2f4f7f3e8a9e0e8f1">[email protected]</span></a> or
<a href="/cdn-cgi/l/email-protection#470a222b2e343426690f262637262b2607323437332869202831"><span class="__cf_email__" data-cfemail="8bc6eee7e2f8f8eaa5c3eaeafbeae7eacbfef8fbffe4a5ece4fd">[email protected]</span></a>, respectively).
SUPPLEMENTARY INFORMATION: A patent owner in an AIA trial proceeding
may file an MTA as a matter of right. See 35 U.S.C. 316(d)(1),
326(d)(1). After receiving public feedback about the PTAB's MTA
practice, in October 2018 the USPTO published a Request for Comments in
the Federal Register seeking written public comments on a proposed
amendment process in AIA trials that would involve preliminary guidance
from the PTAB on the merits of an MTA and an opportunity for a patent
owner to file a revised MTA. See Request for Comments on MTA Practice
and Procedures in Trial Proceedings Under the America Invents Act
Before the Patent Trial and Appeal Board, 83
[[Page 60135]]
FR 54319 (Oct. 29, 2018). The majority of comments supported the PTAB
issuing preliminary guidance in cases involving an MTA, and commenters
were almost evenly mixed in supporting or opposing the opportunity for
a patent owner to file a revised MTA.
On March 15, 2019, in response to these public comments, the USPTO
issued a Federal Register Notice detailing the MTA Pilot Program. See
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, 84 FR 9497 (Mar. 15,
2019). The MTA Pilot Program provides a patent owner with two options
not previously available: (1) a patent owner may choose to receive
preliminary guidance from the PTAB on its MTA; and (2) a patent owner
may choose to file a revised MTA after receiving a petitioner's
opposition to the original MTA and/or the PTAB's preliminary guidance
(if requested). If a patent owner does not elect either option, then
AIA trial practice, including MTA practice, is essentially unchanged
from the practice prior to the implementation of the MTA Pilot Program.
The USPTO subsequently extended the MTA Pilot Program on September
16, 2021, to run through September 16, 2022. The USPTO presented the
results of the MTA Pilot Program through March 31, 2022, in Installment
7 of the Motion to Amend Study. The most recent information and
statistics related to MTAs are available on the USPTO's website at
<a href="http://www.uspto.gov/patents/ptab/motions-amend-study">www.uspto.gov/patents/ptab/motions-amend-study</a>.
Now that stakeholders have had experience with the MTA Pilot
Program, as well as access to the results of the Motion to Amend Study,
the USPTO plans to issue a Request for Comments regarding the MTA Pilot
Program to gather stakeholder feedback and suggestions on the program
and on amendment practice generally and to determine whether to make
the program permanent through notice-and-comment rulemaking. The USPTO
is extending the MTA Pilot Program for a second time, through September
16, 2024, while it gathers public input. The requirements for the
program remain as set forth in the original notice without
modification.
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2022-21472 Filed 10-3-22; 8:45 am]
BILLING CODE 3510&ndash:16-P
</pre><script data-cfasync="false" src="/cdn-cgi/scripts/5c5dd728/cloudflare-static/email-decode.min.js"></script></body>
</html>Indexed from Federal Register on October 4, 2022.
This is legal information, not legal advice. Laws vary by jurisdiction and change frequently. Always verify current law with official sources and consult a licensed attorney in your jurisdiction for advice on your specific situation.