PTAB Amendment Pilot Effective Today

Today, the Patent Trial & Appeal Board (PTAB) published the final Pilot Program for Motions to Amend in the Federal Register (here). The Pilot will run for one year, and is applicable to all AIA trial proceedings instituted going forward. (i.e., proceedings instituted before 3/15 are ineligible). The published Pilot carries forward the main idea of the initial RFC — feedback to the Patent Owner on its Motion to Amend prior to final decision — but, offers notable revisions in procedural timing and options as compared to the RFC.

As revised, those Patent Owners inclined to amend before the PTAB, may find the Pilot to offer strategic advantages beyond mere feedback.
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New Proposal May Only Amplify Current Amendment Criticisms

A few weeks back, the USPTO 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. The idea being to provide for a meaningful opportunity for Patent Owner’s to revise proposed amendments where appropriate.

While the agency’s effort to improve the amendment process is to be applauded, its proposal will only increase Patent Owner costs and frustrations.
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