Notice2024-21135
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
September 17, 2024
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 previously extended up to September 16, 2024. The MTA pilot program provides additional options for a patent owner who files an MTA before the Patent Trial and Appeal Board (PTAB). In particular, the MTA pilot 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 89 Issue 180 (Tuesday, September 17, 2024)</title>
</head>
<body><pre>
[Federal Register Volume 89, Number 180 (Tuesday, September 17, 2024)]
[Notices]
[Page 76091]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2024-21135]
-----------------------------------------------------------------------
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 previously extended up to September 16, 2024. The MTA
pilot program provides additional options for a patent owner who files
an MTA before the Patent Trial and Appeal Board (PTAB). In particular,
the MTA pilot 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: Applicable Date: September 17, 2024. Duration: The MTA pilot
program will run until March 31, 2025, or earlier if replaced by a
permanent program after notice-and-comment rulemaking. The USPTO may
extend the MTA pilot program (with or without modification) on either a
temporary or a permanent basis or may discontinue the MTA pilot
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#e6ab8f948f878bc8b7938f8888a69395969289c8818990"><span class="__cf_email__" data-cfemail="602d091209010d4e3115090e0e20151310140f4e070f16">[email protected]</span></a> or
<a href="/cdn-cgi/l/email-protection#ffb29a93968c8c9ed1979e9e8f9e939ebf8a8c8f8b90d1989089"><span class="__cf_email__" data-cfemail="c984aca5a0babaa8e7a1a8a8b9a8a5a889bcbab9bda6e7aea6bf">[email protected]</span></a>, respectively).
SUPPLEMENTARY INFORMATION: A patent owner in an America Invents Act
(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, including some concerns regarding the low grant
rate of claim amendments in AIA trial proceedings, 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.
Request for Comments on MTA Practice and Procedures in Trial
Proceedings Under the America Invents Act Before the Patent Trial and
Appeal Board, 83 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 Notice detailing the MTA pilot program. 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 9,497 (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 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 MTA pilot
program.
The USPTO has extended the MTA pilot program twice. The first
extension on September 16, 2021 ran through September 16, 2022, and the
second extension currently runs until September 16, 2024. The USPTO
continues to present results of the MTA pilot program yearly, with the
most recent report based on data up through March 31, 2024, in
Installment 9 of the Motions to Amend Study. The most recent
information and statistics related to MTAs are available on the USPTO's
website at <a href="https://www.uspto.gov/patents/ptab/motions-amend-study">https://www.uspto.gov/patents/ptab/motions-amend-study</a>.
After four years of experience with the MTA pilot program and
development of Federal Circuit case law concerning burden allocation in
the MTA context, the USPTO issued a Request for Comments to seek
feedback on the public's experience with the program and the burden-
allocation rules that apply to MTAs. See Request for Comments Regarding
MTA Pilot Program and Rules of Practice to Allocate the Burdens of
Persuasion on Motions to Amend in Trial Proceedings Before the Patent
Trial and Appeal Board, 88 FR 33063 (May 23, 2023) (2023 RFC). Then on
March 4, 2024, after consideration of the received comments and based
on the experience of the Board with the MTA pilot program, the USPTO
published a Notice of Proposed Rulemaking concerning Motion to Amend
Practice and Procedures in Trial Proceedings Under the America Invents
Act Before the Patent Trial and Appeal Board. 89 FR 15531 (``2024
NPRM''). The USPTO proposed to revise its rules of practice to provide
for issuance of preliminary guidance in response to an MTA and to
provide a patent owner with the option for filing a revised MTA. While
the USPTO finalizes rules in this regard, the USPTO is extending the
MTA pilot program for a third time. The MTA pilot program is hereby
extended through March 31, 2025. The requirements for the MTA pilot
program remain as set forth in the original Notice without modification
at this time.
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2024-21135 Filed 9-16-24; 8:45 am]
BILLING CODE 3510-16-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 September 17, 2024.
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.