By: Katherine Rubino

Recently the Patent Trial and Appeal Board (PTAB) instituted a new pilot program for motions to amend during post-grant proceedings including post-grant review (PGR), inter-partes review (IPR) and covered business methods (CBM). At a time when 70% of all claims challenged in a post-grant proceeding are invalidated, this new pilot program is designed to make amendments to such challenged claims slightly easier for patent holders.

The recently instituted pilot program was first proposed by the PTAB in October 2018. After receiving comments from the public, the PTAB enacted this new pilot program to go into effect for all post-grant petitions instituted after March 15^th, 2019. The pilot program creates two different options to amend. The first, is to obtain feedback as to a proposed preliminary amendment, also known as Preliminary Guidance. The Preliminary Guidance is generally provided in a written paper format, but may also be delivered orally in certain situations. The second is to revise amended claims in view of a petitioner’s opposition and any Preliminary Guidance.

Currently, motions to amend happen very rarely during post grant proceedings. A review of collected statistics from the United States Patent and Trademark Office (USPTO between 2013, when post grant proceedings were first initiated, through September 30^th 2018, reflects that only 8% of all motions to amend substituted claims are granted. Reasons for denial of substitute claims include both statutory and procedural rejections. The USPTO reports that 89% of all denials are for statutory rejections such as ⸹101, ⸹102, ⸹103, ⸹112, ⸹316, and/or any combination of the above. Over the past six years since post-grant proceedings were first initiated, motions to amend were filed the most in 2018, with 114 motions to amend filed.

Source: USPTO

One potential impact for the new pilot program is a change to the timing of certain key events during a post grant proceeding.  Under the pilot program, new claims can be proposed up to 13 weeks before a post grant proceeding’s final oral argument. This tight timeline may result in an intensification of issues at the tail end of such proceedings. In addition, petitioners of post grant proceedings need to be aware that costs may increase if a patent owner opts for the pilot program, as a petitioner may have to oppose in a new round of substitute claims. In some instances, petitioners may need to be ready to find new prior art relevant to the substituted claims.

As to how much of an impact this pilot program will have on motion to amend procedures remains to be unseen. At the end of the one year program, the PTAB will decide whether to continue with such practice or to revert back to the old ways. It is important to note that patent owners wishing to take advantage of the new pilot program need to elect such an option, as it is not automatically provided. Further, patent owners wishing to proceed under the old motion to amend practices may elect to do so as well. As more post-grant proceedings utilize this pilot program, it will be interesting to note what effect if any such practice has on a patent owner’s survival rate in a post-grant proceeding.