Legal Alert: USPTO Proposes Rules Updating Motion to Amend Practice Before the PTAB

The United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking (NPRM) today proposing to update its rules governing motions to amend before the Patent Trial and Appeal Board (PTAB).ⁱ The proposed rules would apply to all inter partes reviews, post-grant reviews, and derivation proceedings, and would make certain provisions of the Motion to Amend Pilot Program, initially launched in 2019, permanent. According to the USPTO, the proposed 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.”  

Highlights of the NPRM 

• Makes certain provisions of the Motion to Amend Pilot Program permanent 
• Revises rules around burdens of persuasion  
• Confirms the Board’s ability to raise a new ground of unpatentability in response to a motion to amend 
• Clarifies that the Board will consider all evidence of record when determining the patentability of proposed amended claims, including evidence provided by the USPTO 

Background 

The USPTO implemented the Motion to Amend (MTA) Pilot Program in response to public criticism about low success rates for motions to amend during post-grant proceedings.ⁱⁱ The MTA Pilot Program gave patent owners the opportunity to request the Board’s preliminary guidance on proposed amended claims and to file a revised motion to amend in response by right.ⁱⁱⁱ The MTA Pilot Program saw some success, as the Board’s motion to amend grant rate improved from 14% to 24%.^iv The USPTO extended the MTA Pilot Program twice,^v and, last spring, issued a Request for Comments (RFC) seeking public input on whether the Pilot Program should be made permanent.^vi  

The RFC also sought feedback on whether patent owners considered reexamination or reissue proceedings to be better avenues than post-grant trials for amending claims, and whether the Board “should more broadly use its discretion to raise sua sponte grounds [of unpatentability] in the MTA process.”^vii As to the latter, the USPTO sought feedback about who (the Board or the petitioner) bears the burden of persuasion on grounds of unpatentability raised by the Board.  

Proposed rules relating to preliminary guidance and revised motions to amend 

In the NPRM, the USPTO proposes to revise 37 C.F.R. §§ 42.121 and 42.221 — the rules related to amendment of a patent — to make permanent two provisions of the MTA Pilot Program — i.e., the ability to request preliminary guidance from the Board and the ability to submit a revised motion to amend without prior Board authorization.  

As to preliminary guidance, the proposed rule changes would make permanent a patent owner’s ability to request the Board’s “initial, preliminary views” on the motion to amend. Although the proposed rule changes make clear that the preliminary guidance is not “binding on the Board in any subsequent decision in the proceeding,” they also provide that the preliminary guidance will indicate “whether the parties have shown a reasonable likelihood of meeting their respective burdens of persuasion” and “notice any new ground of unpatentability discretionarily raised by the Board.”  

As to a revised motion to amend, the proposed rule changes would make permanent a patent owner’s right to file, without prior authorization from the Board, a revised motion to amend after receiving an opposition to the original motion to amend or after receiving the Board's preliminary guidance. 

Finally, in response to comments expressing concern about the compressed timeline under the MTA Pilot Program, the NPRM proposes language allowing the Board to extend deadlines — including the deadline for issuing a final written decision within one year of the trial institution date — if needed.  

Proposed rules addressing burdens of persuasion and the scope of record evidence 

The NPRM also proposes changes to the rules assigning the burden of persuasion on motions to amend where the Board raises sua sponte a new ground of unpatentability. Previously, 37 C.F.R. §§ 42.121(d) and 42.221(d) assigned the burden of persuasion to the petitioner to show, by a preponderance of the evidence, that any proposed substitute claims were unpatentable, but did not explicitly assign a burden of persuasion for any grounds of unpatentability raised sua sponte by the Board. The NPRM, while noting that the Board is a “neutral tribunal” that cannot be assigned a burden of persuasion, nonetheless proposes amending the rules to clarify that the Board determines unpatentability on a new ground of unpatentability “based on a preponderance of the evidence of record or made of record.” 

In addition, the previous rules allowed the Board to raise a new ground of unpatentability in response to a motion to amend, but only when “the interests of justice” required and “only for reasons supported by readily identifiable and persuasive evidence of record.”^viii The proposed rule changes remove these restrictions from 37 C.F.R. §§ 42.121(d) and 42.221(d). Specifically, when raising a new ground of rejection, the proposed rules provide that the Board may rely on evidence not already of record in the proceeding. The Board “may consider and make of record: (1) “any evidence in a related proceeding before the Office and evidence that a District Court can judicially notice,” and (2) “prior art identified through a prior art search conducted by the Office at the Board’s request.” The proposed rules, however, allow the Board to request a prior art search only “[w]hen no petitioner opposes or all petitioners cease to oppose [the] motion to amend.”  

The proposed rules are meant to address the Federal Circuit’s 2022 precedential decision in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH.^ix In that case, the Court criticized the USPTO’s “substantial reliance on the adversarial system” that confined the Board’s ability to raise new grounds of unpatentability to rare circumstances. According to the NPRM, the proposed rule changes would “broaden the body of evidence that the Board may consider and make of record, to now include the entire evidence of record in the proceeding, without limitation.” The proposed rules addressing burdens of persuasion and the scope of record evidence may represent the biggest sea change in motion to amend practice, given that, as of today, the Board has never relied on evidence not already of record when raising a new ground of unpatentability.  

Reissue and reexamination options 

Although the RFC sought comments on reexamination and reissue proceedings, the NPRM does not propose changes to the Office’s current guidance on those proceedings. In response to comments about the reduced usefulness of amendments pursued through a reissue or reexamination given the high likelihood of stay during a pending post-grant proceeding, patent owners are reminded that they may request that any stay of an ex parte reexamination proceeding be lifted “notwithstanding a Federal Circuit appeal of a final written decision on the same patent.”^x  

Comments 

Comments can be submitted through the Federal eRulemaking Portal, Regulations.gov, until May 3, 2024. 

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ⁱ Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 89 Fed. Reg. 15531 (Mar. 4, 2024). 

ⁱⁱ Notice Regarding a New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 84 Fed. Reg. 9497, 9499 (March 15, 2019). 

ⁱⁱⁱ Id. at 9499-9500. 

^iv PTAB Motion to Amend Study updated through March 31, 2023 (uspto.gov) 

^v Extension of the Patent Trial and Appeal Board Motion to Amend Pilot Program, 87 Fed. Reg. 60134 (Oct. 4, 2022). 

^vi Request for Comments Regarding the Motion To Amend Pilot Program and Rules of Practice To Allocate the Burdens of Persuasion on Motions To Amend in Trial Proceedings Before the Patent Trial and Appeal Board, 88 Fed. Reg. 33063 (May 23, 2023). 

^vii Id. at 33065. 

^viii 37 C.F.R. §§ 42.121(d)(3), 42.221(d)(3). 

^ix 28 F.4th 1371 (Fed. Cir. 2022). 

^x Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding, 84 Fed. Reg. 16654, 16658 (April 22, 2019).