The United States Patent and Trademark Office (USPTO) has announced new rules governing amendment practice in trial proceedings under the America Invents Act (AIA), making certain provisions of the motion to amend pilot program (MTA pilot program) permanent.
These rules allow a patent owner to receive preliminary guidance on a motion to amend (MTA) and submit one revised MTA. They clarify that a preponderance of evidence standard applies to new grounds of unpatentability and give the Board discretion over considering all evidence when deciding on an MTA.
The USPTO's decision to largely codify proposed rulemaking for MTA practice and procedures at the Patent Trial and Appeal Board (PTAB) has been met with approval. Despite public comments suggesting additional changes, the USPTO opted not to implement them. One key difference is the requirement for the MTA to include support from the original disclosure. Additionally, the Board has the privilege to consider information identified in response to a request for examination assistance, and allows for a reply from the patent owner and a sur-reply from the petitioner of limited scope after receiving preliminary guidance.
These new rules aim to streamline the MTA process and provide clarity on procedures at the PTAB. It is essential for patent owners and petitioners to familiarize themselves with these rules to navigate trial proceedings effectively.
United States Patent and Trademark Office (Office or USPTO) modifies its rules of practice 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). These rules provide a patent owner with the option of issuance of preliminary guidance in response to an MTA and the option of filing one additional revised MTA. Further, these rules clarify that a preponderance of evidence standard applies to any new ground of unpatentability raised by the Board, and 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.
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