USPTO issues final rule on PTAB’s Motion to Amend procedure

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Patent Trial and Appeal Board

USPTO issues final rule on PTAB’s Motion to Amend procedure

To promote the issuance of robust and reliable patents, today we announced a final rule governing the motion to amend (MTA) procedures applicable to trial proceedings under the America Invents Act (AIA) administered by the Patent Trial and Appeal Board (PTAB).

Based on public comments and the steady support for the MTA pilot program, we are moving forward with formalizing the MTA pilot program and revising the rules that allocate burdens of persuasion in connection with MTAs. The final rule 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. Under this rule, when exercising the discretion to raise a new ground of unpatentability, the PTAB may consider all evidence of record in the proceeding, including information identified in response to PTAB-initiated examination assistance. The rule also clarifies that a preponderance of evidence standard applies to any new ground of unpatentability raised by the PTAB.

This final rule is the culmination of several efforts beginning with the implementation of the MTA Pilot Program in March 15, 2019. After four years of experience with that pilot program, we issued a Request for Comments seeking public input on the MTA Pilot Program and the rules of practice to allocate burdens of persuasion on MTAs. Guided by the received comments, we issued a Notice of Proposed Rulemaking on March 4, 2024, seeking public input on proposed rules governing the MTA practice and related procedures in AIA trial proceedings before the PTAB.

“Since launching the Motion to Amend Pilot Program in 2019, we have heard from patent owners that it is an efficient and effective way to receive feedback on their amended claims in order to preserve their patent rights,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal. “Making the program permanent and revising the burden-allocation rules ensures the USPTO is issuing robust and reliable patents and strengthens the predictability and certainty of post-grant trial proceedings before the PTAB."

The final rule is effective on October 18, 2024. We are additionally issuing a short-term extension of the MTA Pilot Program to ensure it continues through the effective date of the final rule.

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