Pilot Program Would Provide for Separate Briefing and Board Feedback

The USPTO has published a Request for Comments (RFC) (here) on a proposed procedure for motions to amend in AIA Trial Proceedings. The proposal provides for a pilot program in which the parties are provided with an initial Board assessment of the proposed amendment. The assessment is provided early in the process; providing meaningful opportunity to revise and oppose proposed amendments; and ensuring the amendment process concludes within the 12-month statutory timeline.

Specifically, the USPTO seeks public input on a proposed amendment process that would involve a preliminary non-binding decision by PTAB regarding the merits of a motion to amend. Such information may include whether the motion, in view of a petitioner’s preliminary opposition, is reasonably likely to meet statutory and regulatory requirements and whether the proposed substitute claims are reasonably likely to meet patentability requirements. The proposed process would also provide an opportunity for a patent owner to revise, and a petitioner to oppose, its motion to amend and proposed substitute claims in view of the preliminary amendment decision.

The USPTO also seeks comments on the proposed timelines designed to ensure completion within 12 months from institution, as well as a number of specific questions included in the RFC.

In addition, the USPTO seeks input on whether PTAB should continue to allocate the burden of persuasion regarding patentability of substitute claims as set forth in Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082 (Paper 13) (PTAB April 25, 2018) (informative), as well as any comments on motion to amend practice before PTAB generally.

While it makes sense for the PTAB to address the amendment process given the negative attention, it seems unlikely that Patent Owners will find these changes helpful. The problem with amending is not the lack of feedback from the Board, it’s the incremental degree to which litigating Patent Owners amend their claims. The enhanced motion to amend feedback will not remedy the main problem. Additionally, the determination is non-binding, and would necessarily need to construe claims, and opine on the same art (in most cases) applicable to the main claims. Yet, the determination would not have the benefit of the full trial proceeding, cross-examination, etc. So, not only would the determination be non-binding, it would be incomplete. The risk of an early, negative determination will only put the Patent Owner in a worse position by undermining any settlement value to amended claims. Likewise, amendment decisions are typically made once the cross-examination reveals the strength of the case-n-chief. For these reasons, Patent Owners will almost certainly opt out of this Pilot (if given the opportunity).

Scott A. McKeown is an author of the Patents Post Grant.