Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board

DEPARTMENT OF COMMERCE <SUBAGY>Patent and Trademark Office</SUBAGY> <CFR>37 CFR Part 42</CFR> <DEPDOC>[Docket No. PTO-P-2020-0060]</DEPDOC> <RIN>RIN 0651-AD50</RIN> <SUBJECT>Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board</SUBJECT> <HD SOURCE="HED">AGENCY:</HD> Patent Trial and Appeal Board, United States Patent and Trademark Office, Department of Commerce. <HD SOURCE="HED">ACTION:</HD> Notice of proposed rulemaking. <SUM> <HD SOURCE="HED">SUMMARY:</HD> The United States Patent and Trademark Office (Office or USPTO) proposes to update its rules governing amendment practice in trial proceedings under the Leahy-Smith America Invents Act (AIA) to make permanent certain provisions of the Office's motion to amend pilot program (MTA pilot program) and to revise the rules that allocate burdens of persuasion in connection with motions to amend (MTAs). The Office proposes 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 one additional revised MTA. Further, the Office proposes to revise the rules to clarify that a preponderance of evidence standard applies to any new ground of unpatentability raised by the Board and to clarify that when exercising the discretion to grant or deny an MTA or to raise a new ground of unpatentability, the Board may consider all evidence of record in the proceeding, including evidence identified through a prior art search conducted by the Office at the Board's request and added to the record. These rules better ensure the Office's role of issuing robust and reliable patents, and the predictability and certainty of post-grant trial proceedings before the Board. These changes would apply to the existing consolidated set of rules relating to the Office trial practice for <E T="03">inter partes</E> review (IPR), post-grant review (PGR), and derivation proceedings that implemented provisions of the AIA providing for trials before the Office. </SUM> <EFFDATE> <HD SOURCE="HED">DATES:</HD> To ensure consideration, commenters must submit written comments on or before May 3, 2024. </EFFDATE> <HD SOURCE="HED">ADDRESSES:</HD> For reasons of government efficiency, comments must be submitted through the Federal eRulemaking Portal at <E T="03">https://www.regulations.gov.</E> To submit comments via the portal, enter docket number PTO-P-2020-0060 on the home page and select “search.” The site will provide a search results page listing all documents associated with this docket. Find a reference to this proposed rulemaking and select the “Comment” icon, complete the required fields, and enter or attach your comments. Attachments to electronic comments will be accepted in ADOBE® portable document format or MICROSOFT WORD® format. Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments. Visit the Federal eRulemaking Portal ( <E T="03">https://www.regulations.gov</E> ) for additional instructions on providing comments via the portal. If the electronic submission of comments is not feasible due to lack of access to a computer and/or the internet, please contact the USPTO using the contact information below for special instructions regarding how to submit comments by mail or by hand delivery, based upon the public's ability to obtain access to USPTO facilities at the time. <FURINF> <HD SOURCE="HED">FOR FURTHER INFORMATION CONTACT:</HD> Miriam L. Quinn, Acting Senior Lead Administrative Patent Judge; or Melissa Haapala, Vice Chief Administrative Patent Judge, at 571-272-9797, <E T="03">Miriam.Quinn@uspto.gov</E> or <E T="03">Melissa.Haapala@uspto.gov,</E> respectively. </FURINF> <SUPLINF> <HD SOURCE="HED">SUPPLEMENTARY INFORMATION:</HD> <HD SOURCE="HD1">Background</HD> <HD SOURCE="HD2">Development of the Proposed Rule</HD> On September 16, 2011, the AIA was enacted into law (Pub. L. 112-29, 125 Stat. 284 (2011)), and in 2012, the Office implemented rules to govern Office trial practice for AIA trials, including IPR, PGR, covered business method (CBM), and derivation proceedings pursuant to 35 U.S.C. 135, 316, and 326 and AIA 18(d)(2). See 37 CFR part 42; Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions, 77 FR 48612 (August. 14, 2012); Changes to Implement <E T="03">Inter Partes</E> Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents, 77 FR 48680 (August 14, 2012); Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention, 77 FR 48734 (August. 14, 2012). Additionally, the Office published a Patent Trial Practice Guide (Practice Guide) for the rules to advise the public on the general framework of the regulations, including the structure and times for taking action in each of the new proceedings. See 84 FR 64280 (November 21, 2019); <E T="03">https://www.uspto.gov/TrialPracticeGuideConsolidated.</E> The Practice Guide provides a helpful overview of the Patent Trial and Appeal Board (PTAB or Board) process. See, <E T="03">e.g.,</E> Practice Guide at 5-8 (AIA trial process), 66-72 (motions to amend). In 2018, the Office published a Request for Comments (RFC) on a proposed procedure for motions to amend filed in AIA proceedings before the PTAB. See RFC on MTA Practice and Procedures in Trial Proceedings under the America Invents Act before the Patent Trial and Appeal Board, 83 FR 54319 (October 29, 2018) (seeking public comments on a previously proposed procedure for MTAs, the Board's MTA practice generally, and the allocation of burdens of persuasion after <E T="03">Aqua Products, Inc.</E> v. <E T="03">Matal,</E> 872 F.3d 1290 (Fed. Cir. 2017) (en banc) ( <E T="03">Aqua Products</E> )) (2018 RFC). After considering the comments received in response, the Office implemented the MTA pilot program. See Notice Regarding a New Pilot Program Concerning MTA Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 84 FR 9497 (March 15, 2019) (MTA pilot program notice). The MTA pilot program was extended through September 16, 2024. Extension of the Patent Trial and Appeal Board Motion to Amend Pilot Program, 87 FR 60134 (October 4, 2022). <HD SOURCE="HD2">Preliminary Guidance and Revised Motions To Amend Under the MTA Pilot Program</HD> The MTA pilot program provides a patent owner with two independent options when proposing substitute claims for challenged patent claims during an AIA trial proceeding. Under the first option in the MTA pilot program, if requested by a patent owner in its original MTA, the Board will issue preliminary, non-binding guidance. Under the second option, a patent owner may file, without needing Board authorization, a revised MTA as discussed further below. The Board's preliminary guidance typically will come in the form of a short paper issued after a petitioner files its opposition to the MTA (or after the due date for a petitioner's opposition, if none is filed). The preliminary guidance provides, at a minimum, an initial discussion about whether there is a reasonable likelihood that the original MTA meets statutory and regulatory requirements for an MTA and whether the petitioner (or the record then before the Office, including any opposition to the MTA and accompanying evidence) establishes a reasonable likelihood that the substitute claims are unpatentable. See MTA pilot program notice, 84 FR 9500. Further, a patent owner may choose to file a revised MTA after receiving a petitioner's opposition to the original MTA or after receiving the Board's preliminary guidance (if requested). A revised MTA replaces the original MTA. If a patent owner chooses to file a revised MTA, the revised MTA must include one or more new proposed substitute claims in place of previously presented substitute claims, where each new proposed substitute claim presents a new claim amendment. The new claim amendments, as well as arguments and evidence, must be responsive to issues raised in the preliminary guidance (if requested) or in petitioner's opposition. Instead of filing a revised MTA, a patent owner may choose to file a reply to a petitioner's opposition to the MTA and/or the preliminary guidance (if requested). If preliminary guidance was issued at a patent owner's request, the patent owner may choose to take no action and wait for the petitioner's reply to the preliminary guidance and then file a sur-reply. The MTA pilot program notice set forth typical timelines and due dates for the filing or issuance of MTA-related papers, depending on whether a patent owner takes advantage of neither, one, or both options under the program. See MTA pilot program notice, 84 FR 9506-9507, Appendices 1A (Patent Owner Reply Timeline) and 1B (Revised MTA Timeline). Where a revised MTA is filed, the Office issues a scheduling order that adjusts the deadline for oral hearing to accommodate the additional briefing on the MTA. As described in the MTA pilot program notice and implemented by the Board, the preliminary guidance provides the Board's initial, preliminary views on the original MTA. With that in mind, the preliminary guidance will provide an initial discussion about whether the parties have shown a reasonable likelihood of meeting their respective burdens. See Rules of Practice To Allocate the Burden of Persuasion on Motions To Amend in Trial Proceedings Before the Patent Trial and Appeal Board. 85 FR 82923 (December 21, 2020); 37 CFR 42.121(d), 42.221(d). In particular, the preliminary guidance will address ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━ Preview showing 10k of 70k characters. Full document text is stored and available for version comparison. ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━