For AIA trials instituted on or after March 15, 2019, the patent owner may opt-in to a pilot program the Patent Office implemented for motion to amend (“MTA”) practice and procedures in the PTAB’s administration of these trials. Today’s Federal Register (link) includes the Patent Office’s explanation of the program, which it proposed in October 2018. The Office’s explanation also includes its reply to comments the public offered in response to the proposal. Generally, the comments supported the proposed program, but expressed concerns over the tight timelines proposed. The implemented program appears to address those concerns.
The program offers the patent owner with two new options: (1) the “patent owner may choose to receive preliminary guidance from the Board on its MTA,” and (2) the “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 preliminary guidance (if requested).” The options, if taken, will result in a compressed and intense period of activity, requiring the trial participants to have a strong knowledge of the prior art generally and the ability to act quickly. The Board, after all, still prefers to issue a final written decision within one year of instituting the trial, even though it can extend that statutory deadline by six months.
The Patent Office’s notice does not mention the Federal Circuit’s en banc decision from 2017 in Aqua Products (discussed here). And the Patent Office’s most recent installment in its ongoing study of motions to amend show that the number of such motions more than doubled after the court’s decision, yet the grant rate remained no different, and very low. The apparent point of this program is to ensure the patent owner has a better chance of having the Board grant a motion to amend. The program arrives a week after the Board designated as precedential its February decision in Lectrosonics, Inc. v. Zaxcom, Inc., Case Nos. IPR2018-01129, -01130 (PTAB Feb. 25, 2019), which offers information and general guidance on briefing motions to amend.
Time will tell whether patent owners dragged into these trials will embrace the program, or continue to maintain continuation applications pending in patent families prone to these trials, where they may have a less burdensome route to obtaining narrower claims. According to its explanation, the Office anticipates reassessing the program in about a year, noting “the program is a ‘pilot’ in the sense that the Office may modify MTA procedures in response to feedback and experience with the program during and/or after the course of the pilot program. The Office always welcomes continued feedback from the public.”