[Federal Register Volume 86, Number 177 (Thursday, September 16, 2021)]
[Notices]
[Page 51656]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-20037]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2021-0042]
Extension of the Motion To Amend Pilot Program in Trial
Proceedings Under the America Invents Act Before the Patent Trial and
Appeal Board
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
extending the Motion to Amend (MTA) Pilot Program, which was initiated
on March 15, 2019, and provides additional options for a patent owner
who files an MTA before the Patent Trial and Appeal Board (PTAB). In
particular, the MTA Pilot Program provides a patent owner who files an
MTA with options to request preliminary guidance from the PTAB on the
MTA and to file a revised MTA. The program also provides timelines for
briefing to accommodate these options.
DATES: Effective Date: September 16, 2021. Duration: The MTA Pilot
Program will run until September 16, 2022. The USPTO may extend the MTA
Pilot Program (with or without modification) on either a temporary or a
permanent basis, or may discontinue the program after that date.
FOR FURTHER INFORMATION CONTACT: Jessica Kaiser, Lead Administrative
Patent Judge, or Michelle Ankenbrand, Lead Administrative Patent Judge,
by telephone at 571-272-9797.
SUPPLEMENTARY INFORMATION: A patent owner in an America Invents Act
(AIA) trial proceeding may file an MTA as a matter of right. See 35
U.S.C. 316(d)(1), 326(d)(1). After receiving feedback from the public
about the PTAB's MTA practice, including some concerns regarding the
grant rate of claim amendments in AIA trial proceedings, in October
2018 the USPTO published a Request for Comments in the Federal Register
seeking written public comments on a proposed amendment process in AIA
trials that would involve preliminary guidance from the PTAB on the
merits of an MTA and an opportunity for a patent owner to file a
revised MTA (Request for Comments on Motion To Amend Practice and
Procedures in Trial Proceedings Under the America Invents Act Before
the Patent Trial and Appeal Board, 83 FR 54319 (Oct. 29, 2018)). The
majority of comments supported the PTAB issuing a preliminary decision
in cases involving an MTA, and commenters were almost evenly mixed in
supporting or opposing a revised MTA. On March 15, 2019, in response to
the stakeholder comments received, the USPTO issued a notice detailing
the MTA Pilot Program (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 FR
9497 (Mar. 15, 2019)).
The MTA Pilot Program provides a patent owner with two options not
previously available: (1) A patent owner may choose to receive
preliminary guidance from the PTAB on its MTA, and/or (2) A patent
owner may choose to file a revised MTA after receiving the petitioner's
opposition to the original MTA and/or after receiving the PTAB's
preliminary guidance (if requested). If a patent owner does not elect
either the option to receive preliminary guidance or the option to file
a revised MTA, AIA trial practice, including MTA practice, is
essentially unchanged from the practice prior to the MTA Pilot Program.
The USPTO has presented preliminary results of the MTA Pilot
Program and continues to track data related to MTAs. The most recent
information and statistics related to MTAs are available on the USPTO's
website at www.uspto.gov/patents/ptab/motions-amend-study.
Based on the preliminary results of the MTA Pilot Program, the
USPTO has decided to extend it. The program is hereby extended through
September 16, 2022. The USPTO may extend the MTA Pilot Program (with or
without modification) on either a temporary or a permanent basis, or
may discontinue the program after that date.
The requirements for the MTA Pilot Program remain as set forth in
the original notice, without modification at this time.
Andrew Hirshfeld,
Commissioner for Patents, Performing the Functions and Duties of the
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2021-20037 Filed 9-15-21; 8:45 am]
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