Today the USPTO published a notice of a pilot program for motion to amend (MTA) practice and procedures in PTAB trial proceedings. The pilot program is a new tool for patent owners that may be used after a PTAB trial has been instituted.
The first major feature of the pilot program is the opportunity for patent owners to request preliminary, non-binding guidance from the panel of PTAB judges regarding its MTA. The guidance would be provided after the petitioner has filed its opposition and will come either in the form of a short paper or through an oral presentation on a conference call.
The guidance will “provide an initial discussion about whether there is a reasonable likelihood that the MTA meets statutory and regulatory requirements for an MTA.” It will also address whether petitioner establishes a reasonable likelihood that the substitute claims are unpatentable.
The second major feature of the pilot program is the opportunity for patent owners to submit a revised MTA. The revised MTA is limited to providing amendments, arguments, and/or evidence that is responsive to issues raised in either the preliminary guidance or petitioner’s opposition to the original MTA. If the patent owner files this reviews MTA, the petitioner may file an opposition, with a corresponding reply and sur-reply.
The pilot program will apply to trials instituted on or after March 15, 2019, and is set to be reassessed in one year.
The full text of the notice can be found here: https://www.govinfo.gov/app/details/FR-2019-03-15/2019-04897