The United States Patent and Trademark Office is rolling out a new pilot program for patent owners who are involved in proceedings before the Patent Trial and Appeal Board (PTAB).
The new program, which provides patent owners with two new options for amending their petitions, is designed to encourage patent owners to file motions to amend during PTAB proceedings, thus improving their chances of success. The program took effect March 15, 2019, and will last for approximately one year.
Under the old motion-to-amend process, only a small handful of PTAB trials included a motion to amend, and only a tiny fraction of those have been successful. For this reason, patent owners have been discouraged from amending their petitions during PTAB proceedings. The USPTO hopes to change that.
The new program provides patent owners with two independent options. First, a patent owner may seek to receive preliminary guidance on its motion to amend from the Board. Second, the patent owner has the option to file a revised motion to amend in view of a petitioner’s opposition and/or after receiving the PTAB’s preliminary guidance (if requested).
If a patent owner decides not to exercise either option, the motion to amend process will remain the same as it otherwise has been. While the effects of this change remain to be seen, it is clear that the new program will provide a greater incentive for patent owners to seek amendments to petitions in PTAB proceedings, thereby maximizing their chances of success.
The full text of the pilot program can be viewed here.
For patent owners, it is important to ensure your attorneys stay apprised of USPTO procedural changes, so you can derive the full benefit from Inter Partes Review, Post Grant Review, and other changes implemented by the AIA.