Extension of the PTAB Motion To Amend Pilot Program
The United States Patent and Trademark Office (USPTO) announced on Oct. 4, 2022, that it is extending the Motion to Amend (MTA) Pilot Program through September 16, 2024. The MTA Pilot Program was initiated on March 15, 2019. It was previously extended on September 16, 2021. The MTA Pilot Program provides two 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). The program provides a patent owner who files an MTA with options to (1) request preliminary guidance from the PTAB on the MTA and (2) to file a revised MTA. The MTA Pilot Program also provides timelines for briefing to accommodate these options.
The USPTO plans to issue a Request for Comments to gather feedback and suggestions on the program and on amendment practice generally. The USPTO also wants comments in order to determine whether to make the program permanent. The requirements for the program remain unchanged.
Motion to Amend studies and data are available on the USPTO website: https://www.uspto.gov/patents/ptab/motions-amend-study
A Distillation of the USPTO’s Notice of Proposed Rulemaking: “Changes under Consideration to Discretionary Institution Practices, Petitioner Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings Before the Patent Trial and Appeal Board,” 88 Fed. Reg. 24503-24518 (Apr. 21, 2023).
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