Federal Register, Volume 84 Issue 51 (Friday, March 15, 2019)

[Federal Register Volume 84, Number 51 (Friday, March 15, 2019)]
[Notices]
[Pages 9497-9507]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-04897]

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2019-0005]

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

AGENCY: United States Patent and Trademark Office, Department of
Commerce.

ACTION: Notice of pilot program.

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SUMMARY: The United States Patent and Trademark Office (``USPTO'' or
``Office'') provides notice of a pilot program for motion to amend
(``MTA'') practice and procedures in trial proceedings under the
America Invents Act (``AIA'') before the Patent Trial and Appeal Board
(``PTAB'' or ``Board''). In particular, a patent owner who files an MTA
will have the ability to choose how that motion will proceed before the
Board, including whether to request preliminary guidance from the Board
on the MTA and whether to file a revised MTA. The Office previously
published a notice requesting comments on proposed modifications to the
current MTA practice and procedures. The Office has considered those
comments and greatly appreciates the feedback. In view of the comments
received, the Office has modified its prior proposal in certain
respects as reflected in this notice, and will implement the MTA pilot
program presented in this notice.

DATES: This pilot will begin on March 15, 2019.
Applicability Date: This pilot program applies to all AIA trial
proceedings instituted on or after the effective date.
Duration: The USPTO anticipates it will reassess the MTA pilot
program approximately one year from its effective date based on
information obtained during the pilot program. The USPTO may terminate
the pilot program at any time or continue the program (with or without
modifications) depending on the feedback received during the course of
the pilot program, and the effectiveness of the program.

FOR FURTHER INFORMATION CONTACT: Melissa Haapala, Acting Vice Chief
Administrative Patent Judge, or Jessica Kaiser, Lead Administrative
Patent Judge, by telephone at (571) 272-9797.

SUPPLEMENTARY INFORMATION:

I. Preamble

On October 29, 2018, the Office published a request for comments
(``RFC'') on a proposed procedure for motions to amend filed in inter
partes reviews, post-grant reviews, and covered business method patent
reviews (collectively AIA trials) before the PTAB. The Office received
49 comments in response to this RFC as of December 21, 2018 (the
closing date for comments). The majority of comments supported the
Office taking action in relation to MTA practice and procedures in AIA
trials. Several comments suggested that the Office should reconsider
the timelines of due dates presented in the initial RFC. Other comments
suggested further revisions, discussed in greater detail below.
This notice provides information relating to the pilot program for
a new MTA practice in response to the stakeholder comments received. As
discussed below, the pilot program provides a patent owner with two
options not previously available. The first option is that a patent
owner may choose to receive preliminary guidance from the Board on its
MTA. The second option is that a patent owner may choose to file a
revised MTA after receiving petitioner's opposition to the original MTA
and/or after receiving the Board's preliminary guidance (if requested).
In addition to these new options, the patent owner also will be
able to pursue an MTA in effectively the same way as current practice.
Specifically, 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
current practice, especially regarding the timing of due dates for
already existing papers in an AIA trial. One exception is that times
between due dates for certain later-filed papers will be extended
slightly, as compared to the existing process. For example, rather than
1 month, a patent owner will have 6 weeks to file a reply after
receiving an opposition to its original MTA, and a petitioner will have
6 weeks to file a sur-reply in response to that reply. See infra
Appendix 1A (PO Reply Timeline). In addition, to align relevant due
dates as done in current practice, a patent owner will have 6 weeks to
file a sur-reply after receiving a reply in relation to the petition,
regardless of whether patent owner files an MTA. Id.
The first notable new feature of the program is that a patent owner
may request, in its MTA, that the Board issue preliminary guidance on
the MTA after a petitioner files an opposition to an MTA (or after the
due date for the opposition, if none is filed). The preliminary
guidance typically will be in the form of a short paper (although it
may be oral guidance provided in a conference call, at the Board's
discretion) that provides preliminary, non-binding guidance from the
Board to the parties about the MTA. The Board's preliminary guidance
will focus on the limitations added in the patent owner's MTA, and will
not address the patentability of the originally challenged claims.
With that in mind, the preliminary guidance will provide an initial
discussion about whether there is a reasonable likelihood that the MTA
meets statutory and regulatory requirements for an MTA. The preliminary
guidance also will provide an initial discussion about whether
petitioner (or the record then before the Office, including any
opposition to the MTA and accompanying evidence) establishes a
reasonable likelihood that the substitute claims are unpatentable. Many
stakeholders who provided comments to the October 2018 Request for
Comment on MTA Practice and Procedure on this topic indicated that they
were in favor of the Board providing some kind of preliminary guidance
of this nature. See Request for

[[Page 9498]]

Comments on MTA Practice and Procedures in Trial Proceedings Under the
America Invents Act Before the Patent Trial and Appeal Board, 83 FR
54319 (Oct. 29, 2018) (hereinafter RFC or MTA RFC); see also Comments
on Motion to Amend Practice and Procedures in AIA Trials, U.S. Patent &
Trademark Office, https://go.usa.gov/xEXS2 (comments received by
December 21, 2018, in response to the RFC) (last visited Mar. 11, 2019)
(hereinafter PTAB RFC Comments website).
The pilot program also allows a patent owner, after receiving
petitioner's opposition to the original MTA and/or after receiving the
Board's preliminary guidance (if requested), to choose to submit a
revised MTA. Many stakeholders who provided comments to the RFC on this
topic also indicated that they were in favor of a patent owner having
an opportunity to file a revised MTA after receiving petitioner's
opposition and preliminary guidance from the Board regarding its
original MTA. See PTAB RFC Comments website.
As discussed in the RFC, a revised MTA includes one or more new
proposed substitute claims in place of previously presented substitute
claims. A revised MTA also may include substitute claims, arguments, or
evidence previously presented in the original MTA, but may not
incorporate any material by reference from the original MTA. A revised
MTA may provide new arguments and/or evidence as to why the revised MTA
meets statutory and regulatory requirements for an MTA, as well as
arguments and evidence relevant to the patentability of pending
substitute claims. A revised MTA must provide amendments, arguments,
and/or evidence in a manner that is responsive to issues raised in the
preliminary guidance and/or petitioner's opposition to the MTA. A
revised MTA may not include amendments, arguments, and/or evidence that
are unrelated to issues raised in the preliminary guidance and/or
petitioner's opposition to the MTA.
If patent owner chooses to file a revised MTA, petitioner may file
an opposition to the revised MTA and preliminary guidance (if
requested). Patent owner may file a reply to the opposition to the
revised MTA, and petitioner may file a corresponding sur-reply. Soon
after patent owner files a revised MTA, the Board will issue a new
scheduling order to accommodate the necessary additional briefing. See
Appendix 1B (Revised MTA Timeline). Generally, the petitioner sur-reply
relating to the revised MTA will be due 1 week before the oral hearing,
and the oral hearing will take place about 9 weeks before the 12-month
statutory deadline for a final written decision. Id. If a revised MTA
is filed and substitute claims need to be addressed in the final
written decision, then the final written decision will address only the
substitute claims at issue in the revised MTA. In other words, newly
added proposed substitute claims in the revised MTA must replace claims
in the initial MTA.
As noted above, if the patent owner does not elect to receive
preliminary guidance or to file a revised MTA, the MTA practice and the
overall trial schedule are essentially unchanged from the current
practice (with the exceptions noted above). In addition, as a general
matter, there will be no changes to a scheduling order during a trial
to accommodate additional MTA briefing unless, and only after, patent
owner chooses to file a revised MTA, which will occur, if at all,
approximately 30 weeks (about 7 months) after institution.
In view of those considerations, the effective date for the pilot
program will be the publication date of this notice. A patent owner may
use the pilot program, and therefore may choose to receive preliminary
guidance from the Board on its MTA and/or to file a revised MTA, in any
AIA case where the Board institutes a trial on or after the effective
date. All cases that have been instituted prior to the effective date
will proceed pursuant to the MTA practices and procedures in effect
prior to the effective date. As noted in the RFC, the program is a
``pilot'' in the sense that the Office may modify MTA procedures in
response to feedback and experience with the program during and/or
after the course of the pilot program. The Office always welcomes
continued feedback from the public.

II. Background

A. Current MTA Practices and Procedures

Under current MTA practices and procedures, patent owner's MTA is
typically due about 3 months after a decision on institution (and on
the same date as patent owner's response to the petition). Under 37 CFR
42.121(a) and 42.221(a), a patent owner is authorized to file such a
motion, but ``only after conferring with the Board.'' Thus, the Board
encourages the parties to request a conference call prior to the due
date for an MTA if such a motion is contemplated.
Petitioner's opposition to the MTA is typically due about 3 months
after the due date for the MTA (and on the same date as petitioner's
reply to patent owner's response to the petition). Patent owner's reply
to the opposition to the MTA is typically due about 1 month thereafter,
and petitioner's sur-reply to the reply to the opposition to MTA is
typically due about 1 month after the reply. Although additional MTAs
cannot be filed without authorization, such motions may be authorized
``when there is a good cause showing or a joint request of the
petitioner and the patent owner to materially advance a settlement.''
37 CFR 42.121(c), 42.221(c); 35 U.S.C. 316(d)(3).
Patent owner's MTA may be contingent on the unpatentability of the
original claims or may be non-contingent. Parties may, and typically
do, present arguments relating to an MTA and related subsequent papers
at the oral hearing (e.g., 9 months after the decision to institute).
The Board addresses an MTA in a final written decision. If the MTA is
contingent, the final written decision addresses substitute claims only
if corresponding original claims are found unpatentable.

B. Previous Feedback and Analysis of MTA Practices and Procedures

In June 2014, the Office published a Request for Comments in the
Federal Register that requested comments on the Board's practice
regarding MTAs. See Request for Comments on Trial Proceedings Under the
America Invents Act Before the Patent Trial and Appeal Board, 79 FR
36474 (June 27, 2014). Comments from the public (including bar
associations, corporations, law firms, and individuals) regarding MTAs
ranged from seeking no change to the Board's current practice, to
proposals for the grant of all motions to amend that meet 35 U.S.C.
316(d) statutory requirements without a review of patentability. Most
comments focused on which party should bear the burden of proving the
patentability or unpatentability of substitute claims proposed in an
MTA, or on the scope of the prior art that must be discussed by a
patent owner in its MTA. The feedback generally did not relate to the
timing of MTAs or other aspects of Board procedure in considering such
motions. The comments are available on the USPTO website: https://go.usa.gov/xXXF8.
In August 2015, the Office solicited further input from the public
on ``[w]hat modifications, if any, should be made to the Board's
practice regarding motions to amend.'' See Proposed Amendments to the
Rules of Practice for Trials Before the Patent Trial and Appeal Board,
80 FR 50720, 50722-25 (Aug. 20, 2015) (hereinafter Proposed Amendments
to

[[Page 9499]]

the Rules). Once again, in relation to MTAs, most comments focused on
which party should bear the burden of proof on the patentability of
substitute claims proposed in an MTA. The comments are available on the
USPTO website: https://go.usa.gov/x5SbK. In addition, a few comments
suggested using examiners to review the patentability of proposed
substitute claims. On balance, the Office decided at that time not to
implement changes to the Board's MTA procedures through rulemaking, but
reaffirmed its commitment to continue to evaluate the best way to
improve the Board's practice. See Proposed Amendments to the Rules, 80
FR at 50724-25; Amendments to the Rules of Practice for Trials Before
the Patent Trial and Appeal Board, 81 FR 18750, 18755 (Apr. 1, 2016).
In an effort to better understand the Board's MTA practice, the
Board undertook in early 2016 a study to determine: (1) The number of
MTAs that had been filed in AIA trials, both as a cumulative total and
by fiscal year; (2) subsequent developments in each MTA (i.e., whether
the motion was decided, rendered moot, withdrawn, or otherwise
dismissed); (3) the number of MTAs requesting to substitute claims that
were granted, granted-in-part, denied-in-part, and denied; and (4) the
reasons the Board provided for denying entry of substitute claims. See
MTA Study (Apr. 30, 2016), https://go.usa.gov/xXXyT; Data for 192
Completed Trials with an MTA, https://go.usa.gov/xXXyZ (last visited
Mar. 11, 2019). The Board continues to collect data on motions to
amend, and has published on its website an update to the study through
March 31, 2018. See https://go.usa.gov/xUJgB (last visited Mar. 11,
2019).
The Office continued to receive feedback from the public regarding
the Board's current MTA practice, including some concerns regarding the
grant rate of claim amendments in AIA trial proceedings. Thus, in
October 2018, the Office published a Request for Comments in the
Federal Register that requested written public comments on a proposed
amendment procedure in AIA trials that would have involved the Board
issuing a preliminary non-binding decision that provides information
relevant to the merits of an MTA, and provides a patent owner with an
opportunity to revise its MTA thereafter. RFC, 83 FR at 54322-23. The
RFC stated that the ``goal of the proposed amendment process and pilot
program is to provide an improved amendment practice in AIA trials in a
manner that is fair and balanced for all parties and stakeholders.''
Id. at 54320.

C. October 2018 RFC

As noted above, in the October 2018 RFC, the Office provided a
proposed amendment procedure in AIA trials that included a preliminary
non-binding decision by the Board on the merits of an MTA, and an
opportunity for a patent owner to revise its MTA thereafter.\1\ See id.
at 54319. Specifically, in that proposal, after a patent owner filed an
MTA that proposed substitute claims, and a petitioner filed an
opposition (if it so chose), the Board would present an initial
evaluation of the parties' submissions in a preliminary decision. See
id. at 54322. In particular, the Board's preliminary decision would
provide information relating to whether the MTA meets the statutory
requirements of 35 U.S.C. 316(d) or 326(d) and the regulatory
requirements of 37 CFR 42.121 or 42.221, and information relating to
the patentability of the proposed substitute claims. Id.
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\1\ The RFC also sought comments as to whether the USPTO should
engage in rulemaking to allocate the burden of persuasion when
determining patentability of substitute claims as set forth in
Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082 (PTAB
Apr. 25, 2018) (Paper 13). RFC, 83 FR at 54320. The USPTO plans to
address that portion of the RFC separately.
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The RFC presented a timeline for the MTA proposal. See RFC, 83 FR
at 54325, App. A1. According to that timeline, the patent owner would
have had 1.5 months to file an MTA, and petitioner would have had 1.5
months to file an opposition to the MTA (about half the time available
under current procedures). The Board then would issue a preliminary
decision, in every case involving an MTA, 1 month after the petitioner
filed its opposition to the MTA. If the Board's preliminary decision
indicated that the MTA was unlikely to be successful in whole or in
part, the patent owner would have 1 month to file either a reply or a
revised MTA. RFC, 83 FR at 54322-23. If the patent owner chose to file
a reply, petitioner would have 1 month to file a sur-reply. Id. at
54323. If patent owner chose instead to file a revised MTA, the parties
could file three additional briefs, each 1 month apart (petitioner's
opposition to the revised MTA, patent owner's reply, and petitioner's
sur-reply). Id. If the patent owner chose not to file any paper, the
petitioner could file a reply to the preliminary decision 2 weeks after
the due date for patent owner to file a reply or revised MTA, and the
patent owner could file a sur-reply 2 weeks thereafter. Id.
In the RFC proposal, if the Board's preliminary decision indicated
that the MTA was likely to succeed in its entirety, then petitioner
would have 1 month after the preliminary decision to file a reply, and
patent owner could file a sur-reply 1 month thereafter. Id.
In all of the alternatives proposed in the RFC, the oral hearing
would have been scheduled at 9.5 months after the decision on
institution (about 2 weeks later in the trial than under current
procedures). See RFC, 83 FR at 54325, App. A1.
The RFC included a number of questions regarding the proposed
amendment process and pilot program. RFC, 83 FR at 54324-35. Initially,
the deadline to submit written comments was December 14, 2018, but the
Office extended the deadline to December 21, 2018, in response to
requests for such an extension from the public.
As discussed below, the Office has carefully considered the
comments received in response to the RFC. Based on those comments, the
Office has revised the proposal in the RFC. The revised pilot program
announced in this notice is discussed in detail below.

III. Pilot Program: Option To Receive Preliminary Guidance by the Board
on an MTA and an Opportunity To Revise the MTA

In the pilot program presented in this notice, the patent owner
will have the opportunity to pursue an MTA in effectively the same way
as current practice by not electing to either receive preliminary
guidance or to file a revised MTA.
Under the pilot program, if the patent owner requests preliminary
guidance on its MTA, the Board will provide preliminary guidance on the
MTA typically in the form of a short paper after petitioner files its
opposition to the MTA (or after the due date for the opposition, if
none is filed). The patent owner will then have an opportunity to
revise its MTA after receiving the petitioner's opposition and/or the
preliminary guidance from the Board (if requested). If the patent owner
chooses to file a revised MTA, the board will revise its scheduling
order. The timing for briefing related to the revised MTA typically
will be the timing shown in Appendix 1B (Revised MTA Timeline).
A revised MTA includes one or more new proposed substitute claims
in place of previously presented substitute claims to address issues
identified in the preliminary guidance and/or the petitioner's
opposition. The presumption remains that only one substitute claim
would be needed to replace each of the original substitute claims,
absent a showing of need. 37 CFR 42.121(a)(3). A revised MTA may
provide new arguments and/or evidence

[[Page 9500]]

as to why the revised MTA meets statutory and regulatory requirements
for an MTA, as well as arguments and evidence relevant to the
patentability of substitute claims pending in the revised MTA. A
revised MTA must provide amendments, arguments, and/or evidence in a
manner that is responsive to issues raised in the preliminary guidance
and/or petitioner's opposition. A revised MTA may not include
amendments, arguments, and/or evidence that are unrelated to issues
raised in the preliminary guidance and/or petitioner's opposition to
the MTA.
If patent owner chooses to file a revised MTA, petitioner may file
an opposition to the revised MTA and preliminary guidance (if
requested). Before the oral hearing, the patent owner also may file a
reply to an opposition to the revised MTA, and the petitioner may file
a corresponding sur-reply. During the oral hearing itself, both parties
may address points raised and evidence discussed in the preliminary
guidance and as briefed by the parties.
In response to petitioner's opposition to the MTA and/or the
preliminary guidance (if requested), patent owner may take one of the
following actions: (1) Reply to petitioner's opposition to the MTA and/
or the preliminary guidance (if requested); (2) file a revised MTA; or
(3) take no action and file no paper regarding the MTA on the due date
for patent owner's reply or a revised MTA after the Board issues
preliminary guidance (if requested). Depending on the action taken by
patent owner, the case will proceed as further described in detail
below.

A. General Procedures in the Pilot Program

In the pilot program, the filings of an MTA by patent owner and an
opposition by petitioner to the MTA will proceed in substantially the
same way as under current procedures. An MTA will be contingent on the
unpatentability of the original claims unless the patent owner
indicates otherwise or cancels the original claims.
The scheduling order will set dates for an MTA and briefing related
thereto. The Scheduling Order will set forth the schedule for the ``PO
Reply Timeline'' depicted in Appendix 1A. In particular, an MTA (if one
is filed) will be due 12 weeks after the date of an institution
decision (and on the same due date as the patent owner response).
Petitioner's opposition to the MTA will be due 12 weeks after the due
date for the MTA (and on the same due date as the petitioner reply).
Consistent with current practice, the scheduling order will specify
generally that the parties may stipulate to move certain due dates, but
may not stipulate to move the last due date before the oral hearing or
the date of the oral hearing. See Trial Practice Guide Update, App. A
at 26-27 (Aug. 2018), available at https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_Guide.pdf (last visited
Mar. 11, 2019). In stipulating to move any due dates in the scheduling
order, the parties must be cognizant that the Board requires
approximately 4 weeks after the filing of an opposition to the MTA (or
the due date for the opposition, if none is filed) for the Board to
issue its preliminary guidance, if requested by patent owner.
If the patent owner indicates in its MTA that it requests
preliminary guidance from the Board on the MTA, the Board will issue
preliminary, non-binding guidance about the MTA no later than 4 weeks
after the due date for petitioner's opposition to the MTA. The Board's
preliminary guidance will focus on the limitations added in the Patent
Owner's motion to amend, and will not address the patentability of the
originally challenged claims. With that in mind, the preliminary
guidance typically will take the form of a short paper that provides an
initial discussion about whether there is a reasonable likelihood that
the MTA meets statutory and regulatory requirements for an MTA, and
also provides an initial discussion about whether petitioner (or the
record before the Office) establishes a reasonable likelihood that the
substitute claims are unpatentable, based on the existing record,
including any opposition to the MTA and accompanying evidence.
To meet statutory and regulatory requirements, an MTA must, among
other things: Propose a reasonable number of substitute claims; propose
substitute claims that do not enlarge the scope of the claims of the
challenged patent or introduce new subject matter; respond to a ground
of unpatentability involved in the trial; and set forth written
description support for each substitute claim. See 35 U.S.C. 316(d),
326(d); 37 CFR 42.121, 42.221; see also Lectrosonics, Inc. v. Zaxcom,
Inc., Case IPR2018-01129 (PTAB Feb. 25, 2019) (Paper 15)
(precedential). Similar to an institution decision, preliminary
guidance on an MTA during an AIA trial will not be binding on the
Board, for example, when it renders a final written decision. The
Board's preliminary guidance will not be a ``decision'' under 37 CFR
42.71(d), and thus parties may not file a request for rehearing of the
preliminary guidance. Because the preliminary guidance does not reflect
final agency action, it is not judicially reviewable (either
independently or in any appeal from a final written decision). See
Chicago & Southern Air Lines v. Waterman S.S. Corp., 333 U.S. 103, 112-
113 (1948); 35 U.S.C. 319(a). Instead, the parties may choose to
respond to the preliminary guidance using the options discussed below.
Although preliminary guidance will not be binding on the Board's
subsequent decisions or provide dispositive conclusions regarding MTA
requirements or the patentability of substitute claims, it may provide
information helpful to the parties. For example, the guidance may be
helpful to patent owner as it determines whether and/or how to revise
its MTA or to petitioner as it determines how to respond to a revised
MTA, or to both parties as they determine how to respond to information
discussed in the preliminary guidance.
As noted above, following the petitioner's opposition to the MTA
and/or based on the Board's preliminary guidance (if requested), the
patent owner may choose to file a reply to the opposition to the MTA
and/or preliminary guidance, file a revised MTA, or do nothing.
Generally speaking, new evidence (including declarations) may be
submitted with every paper in the MTA process, except a sur-reply. A
sur-reply may only include cross-examination deposition transcripts as
further discussed below. Once likely declarants are known, the parties
should confer promptly as to dates for scheduling all depositions after
the relevant papers are to be filed. Parties are expected to make their
declarants available for such depositions promptly, and to make their
attorneys available to take and defend such depositions; any
unavailability will not be a reason to adjust the schedule for briefing
on an MTA or revised MTA absent extraordinary circumstances. Again, it
is incumbent upon the parties to work cooperatively to schedule
depositions of their declarants. Thus, the Board strongly encourages
the parties to meet and confer as soon as practicable (including before
anticipated declarations are submitted, if possible) to coordinate
schedules.

B. Patent Owner Files Reply to Petitioner Opposition to MTA

In the pilot program, the patent owner may choose to file a reply
to the petitioner's opposition to the MTA and preliminary guidance (if
requested), instead of filing a revised MTA. See

[[Page 9501]]

Appendix 1A. The due date for filing the reply is 6 weeks after the due
date for petitioner's opposition to the MTA. Patent owner's reply may
respond to the Board's preliminary guidance (if requested) and to the
petitioner's opposition to the MTA (if filed). A patent owner may file
new evidence, including declarations, with its reply. If patent owner
files a reply, typically no change to the scheduling order will be made
during the trial on the basis that patent owner has filed an MTA (i.e.,
dates will remain as set forth in the scheduling order entered at the
time of institution, shown in Appendix 1A).
The due date for petitioner's sur-reply relating to the MTA will be
6 weeks after the due date for patent owner's reply. As with all sur-
replies generally, petitioner's sur-reply in this context may not be
accompanied by new evidence other than deposition transcripts of the
cross-examination of any reply witness. The sur-reply may respond only
to the preliminary guidance (if requested) and arguments made in the
patent owner's reply brief, comment on reply declaration testimony,
and/or point to cross-examination testimony. Petitioner's sur-reply
shall be due on the same due date as motions to exclude (i.e.,
typically 6 weeks after the reply on the MTA is due).
If patent owner chooses to file a reply, rather than a revised MTA,
the oral hearing will typically be conducted approximately 9 months
after the institution decision, as in the Board's current practice.

C. Patent Owner Files Revised MTA

As an alternative to filing a reply as discussed above, a patent
owner instead may decide to file a revised MTA after receiving
petitioner's opposition and the Board's preliminary guidance (if
requested). See Appendix 1B. The patent owner may file a revised MTA on
the due date for such a filing (i.e., 6 weeks after the due date for
petitioner's opposition to the MTA).
A revised MTA includes one or more new proposed substitute claims
in place of previously presented substitute claims, and may provide new
arguments and/or evidence as to why the revised MTA meets statutory and
regulatory requirements for an MTA, as well as arguments and evidence
relevant to the patentability of pending substitute claims. A revised
MTA also may include substitute claims, arguments, or evidence
previously presented in the original MTA, but may not incorporate any
material by reference from the original MTA. A revised MTA must provide
amendments, arguments, and/or evidence in a manner that is responsive
to issues raised in the preliminary guidance (if requested) or the
petitioner's opposition to the MTA. A revised MTA may not include
amendments, arguments, and/or evidence that are unrelated to issues
raised in the preliminary guidance or the petitioner's opposition to
the MTA.
In addition to proposing further amendments to the proposed
substitute claims, a revised MTA may maintain some proposed substitute
claims from the original MTA and reply to the preliminary guidance or
opposition to the MTA as to those proposed substitute claims. A revised
MTA will be contingent on the unpatentability of original claims unless
the patent owner indicates otherwise or cancels the original claims. As
noted above, newly added proposed substitute claims in the revised MTA
must replace claims in the initial MTA. In addition, a patent owner may
not make the claims proposed in the revised MTA contingent on the
unpatentability of the claims proposed in the original MTA. If a
revised MTA is filed and substitute claims need to be addressed in the
final written decision, then the final written decision will address
only the substitute claims at issue in the revised MTA. The Board will
consider the entirety of the record, including parties' arguments and
cited evidence relevant to the motion to amend, before reaching a final
written decision on the substitute claims proposed in the latest
version of the motion to amend filed by the patent owner.
By statute, the Board may allow additional motions to amend ``as
permitted by regulations prescribed by the Director.'' 35 U.S.C.
316(d)(2). Under currently prescribed regulations, the Board may
authorize an additional MTA when, for example, ``there is a good cause
showing.'' 37 CFR 42.121(c), 42.221(c). For purposes of the pilot
program discussed in this notice, the issuance of the Board's
preliminary guidance addressing the initial MTA and/or the filing of a
petitioner's opposition to the initial MTA provides ``good cause'' to
file a revised MTA under 37 CFR 42.121(c) and 42.221(c). Each of those
papers provides ``good cause'' because they present information
relevant to whether an MTA meets statutory and regulatory requirements
and/or whether proposed substitute claims meet the patentability
requirements under the Patent Act in light of prior art of record.
Shortly after the patent owner files a revised MTA, the Board will
issue a revised scheduling order to adjust the schedule, typically
along the timeline shown in Appendix 1B (Revised MTA Timeline). The
revised scheduling order will set the dates for petitioner's opposition
to the revised MTA, patent owner's reply to the opposition to the
revised MTA and motions to exclude, petitioner's sur-reply as to the
revised MTA, and the oral hearing.
Both the opposition and the reply may be accompanied by new
evidence that responds to issues raised in the preliminary guidance, or
in the corresponding revised MTA or opposition. Petitioner's opposition
to the revised MTA typically will be due 6 weeks after the revised MTA.
Patent owner's reply to the opposition to the revised MTA typically
will be due 3 weeks after the opposition (i.e., 4 weeks before the oral
hearing and 1 week before the due date for motions to exclude).
Petitioner's sur-reply regarding the revised MTA typically will be due
3 weeks after the reply (i.e., 1 week before the oral hearing). See
Appendix 1B.
As discussed above, once the likely declarants are known, the
parties should confer as to dates for scheduling depositions after the
relevant papers are filed. Parties are expected to make their
declarants, and their attorneys, available for such depositions
promptly, and any unavailability will not be a reason to adjust the
schedule for briefing on a revised MTA absent extraordinary
circumstances. For example, because subsequent responsive papers are
due 3 weeks later, if the petitioner submits a declaration with its
opposition to the revised MTA, or patent owner submits a declaration
with its reply to the opposition to the revised MTA, the party should
typically make such declarant available for deposition within 1 week
after filing that declaration.
Because patent owner's reply and petitioner's sur-reply as to a
revised MTA are due near or after motions to exclude are due (see
Appendix 1B), the parties might not have an opportunity to object to
evidence submitted with the reply or sur-reply and file a motion to
exclude such evidence before the oral hearing. See 37 CFR 42.64. Thus,
if needed, a party may seek authorization to file a motion to exclude
reply or sur-reply evidence after the oral hearing or may make an oral
motion to exclude and argue such a motion at the oral hearing.
In the pilot program, if patent owner files a revised MTA, the oral
hearing typically will be conducted 10 months after the institution
decision (9 weeks before the statutory deadline), and the Board will
typically issue its final written decision in accordance with the

[[Page 9502]]

statutory deadline. That said, the Board may, in its sole discretion,
extend the 12-month deadline for good cause, on a case-by-case basis
and for the minimum amount of time necessary to adequately address the
issues presented. See 37 CFR 42.100(c), 42.200(c).

D. Patent Owner Files No Paper After Petitioner Opposition to MTA and/
or Board Issues Preliminary Guidance (if Requested)

A patent owner may choose not to file either a reply or a revised
MTA on the deadline for doing so. In this situation, if the Board has
not issued preliminary guidance, no further briefing is authorized. If
the Board has issued preliminary guidance, the petitioner may file a
reply to that guidance in accordance with the scheduling order
(typically within 3 weeks after the deadline for patent owner to have
filed a paper), and the patent owner may file a sur-reply in response
(typically within 3 weeks after the petitioner's reply is filed). In
this situation, neither the reply nor sur-reply may be accompanied by
new evidence. The petitioner's reply may only respond to the
preliminary guidance, and the patent owner's sur-reply may only respond
to arguments made in the petitioner's reply.

E. Patent Owner Withdraws MTA

A patent owner also may choose to withdraw its initial MTA. In this
circumstance, no further briefing is authorized, and the Board will not
address the MTA in a final written decision.

F. Examiner Assistance

If the petitioner ceases to participate altogether in an AIA trial
in which the patent owner files an MTA, and the Board nevertheless
exercises its discretion to proceed with the trial thereafter, the
Board may, in its discretion, solicit patent examiner assistance
regarding the MTA. Although the Board will consider the specific facts
of each AIA trial, the Board generally does not anticipate proceeding
in an AIA trial without petitioner involvement, absent a request from
the patent owner to address its MTA. If solicited by the Board, the
assistance, e.g., by an examiner in the Central Reexamination Unit
(``CRU''), could include the preparation of an advisory report that
provides an initial discussion about whether an MTA meets certain
statutory and regulatory requirements (i.e., whether the amendment
enlarges the scope of the claims of the patent or introduces new
matter), as well as the patentability of proposed substitute claims,
for example, in light of prior art that was provided by the patent
owner and/or obtained in prior art searches by the examiner.

IV. Responses to the Request for Comments

As of December 21, 2018 (the closing date for comments), the Office
received a total of 49 comments in response to the October 2018 RFC
from intellectual property organizations, trade organizations, other
organizations, and individuals. A substantial number of comments were
submitted on behalf of healthcare industries and organizations and on
behalf of electronic and computer industries and organizations.
Commenters addressed a variety of different topics, but a significant
number of both supporting and opposing commenters indicated concerns
with the short time periods between due dates for different papers in
the MTA procedure timeline proposed in the October 2018 RFC.
The Office appreciates the thoughtful comments, and has considered
and analyzed the comments thoroughly. All of the comments are posted on
the PTAB RFC Comments website. See https://go.usa.gov/xEXS2. The Office
provides below a summary of some of the more common comments, and the
Office's response thereto. The Office carefully considered all of the
comments to the RFC when developing the pilot program presented in this
notice.

Timeline

Comment 1: As noted above, a large number of comments, whether
supportive of the proposal in the MTA RFC or not, indicated concerns
with the time periods between due dates for different papers in that
proposal. See RFC, 83 FR at 54325, App. A1 (presenting a proposed
timeline). In particular, commenters were concerned that the times
between due dates for filing papers were too short, and would be overly
burdensome and increase costs to all parties. Commenters noted that the
proposed short time periods between due dates would make it difficult
to adequately draft and respond to papers. For example, commenters had
concerns that patent owners would not have enough time to draft
meaningful claim amendments at the start of the process, and
petitioners would not have enough time after an MTA to develop reasons
for unpatentability of proposed substitute claims, including by
conducting prior art searches. Commenters were also concerned that the
short time periods between due dates would hinder the parties' ability
to discover and gather evidence. A number of commenters suggested
modifications to the timeline in the proposal.
Response: The Office understands these concerns and has modified
the proposal in the MTA RFC to provide parties more time to prepare
filings and evidence. For example, the timeframes between the due dates
for papers in the pilot program presented in this notice have been
expanded from the proposed times in the prior RFC, with one minor
exception. See Appendices 1A and 1B. In addition, the timeframes for
many early papers filed in the pilot program are now essentially the
same as current MTA practice. In making these revisions, the Office
considered alternative proposals suggested by commenters, as well as
current MTA practice. As a specific example of how the timeline has
been modified in the pilot in this notice, the due date for patent
owner's MTA (12 weeks from the Board's decision to institute) and the
due date for petitioner's corresponding opposition to the MTA (12 weeks
from patent owner's MTA) have been extended from 1.5 months proposed in
the MTA RFC. Additionally, due dates for those papers now are
essentially the same as those as in current MTA practice.
Further, in a case in which the patent owner does not file a
revised MTA, the time for patent owner's reply to the opposition to the
MTA and the time for petitioner's corresponding sur-reply both have
been extended to 6 weeks (as compared to 1 month in the RFC). Where
patent owner files a revised MTA, the due date to file patent owner's
revised MTA and the due date for petitioner's corresponding opposition
both have been extended to 6 weeks (as compared to 1 month). Although
the time for filing a reply and sur-reply regarding a revised MTA has
been decreased to 3 weeks (from 1 month in the RFC), the Office
anticipates that this small decrease still allows sufficient time
because of the limited scope of this briefing.
Comment 2 (cross-examination of declarants): The MTA RFC proposed
that all cross-examinations, i.e., depositions, of witnesses in
relation to direct testimony (provided in declarations) pertaining to
an MTA occur after the Board issued preliminary guidance on an MTA.
Some commenters indicated concerns with not allowing depositions of
witnesses prior to the Board issuing a preliminary decision, and also
concerns with the timing of depositions generally in the RFC proposal.
A number of commenters had specific concerns about whether the proposed
timeline provided sufficient

[[Page 9503]]

time to conduct depositions. These commenters suggested that scheduling
of depositions often requires a long lead-time, and that testimonial
evidence may be important in drafting an MTA and the opposition to the
MTA.
Response: As discussed above, the pilot program's adjusted timeline
increases time between filings, and gives more time for depositions and
related fact-development. Furthermore, the adjusted timelines coincide
with substantive briefing on the petition, and so facilitate obtaining
witness testimony for both MTA related papers and the underlying
proceeding. The pilot program allows parties to present testimony in
almost all MTA related filings, other than sur-replies. Thus, parties
may, and will have sufficient time to, conduct depositions of witnesses
prior to the Board issuing preliminary guidance, similarly to how
parties conduct depositions under the current practice.
The pilot program emphasizes, however, that the parties should
schedule the depositions of likely declarants as soon as possible to
facilitate timely acquiring of cross-examination testimony prior to the
next filing. For example, as noted above, because subsequent responsive
papers are due 3 weeks later, if the petitioner submits a declaration
with its opposition to a revised MTA, or patent owner submits a
declaration with its reply to an opposition to a revised MTA, the party
should typically make such declarant available for deposition within 1
week after filing that declaration.
As explained previously, the parties should meet and confer as soon
as practicable to confirm deposition scheduling. Parties are expected
to make their declarants promptly available for such depositions, and
to make their attorneys available to take and defend such depositions;
any unavailability will not be a reason to adjust the schedule for
briefing on an MTA or revised MTA absent extraordinary circumstances.
Again, it is incumbent upon the parties to work cooperatively to
schedule depositions of their declarants. Thus, the Board strongly
encourages the parties to meet and confer as soon as practicable
(including before anticipated declarations are submitted, if possible)
to coordinate schedules.
Comment 3: Some commenters expressed concerns regarding the
discrepancy in time between MTA filings and filings in the underlying
proceeding relating to the petition in the proposed timeline in the
RFC. Those commenters suggested that the discrepancy could adversely
affect parties' cases and create inefficiency because MTA filings and
underlying proceeding filings may address the same or similar issues. A
commenter noted that petitioner's opposition to the MTA may make
arguments or advocate for claim constructions that create
inconsistencies with petitioner's reply in the underlying proceeding.
For example, patent owner's MTA may address a subset of issues that
eventually also would be addressed in patent owner's response to the
petition (e.g., overlapping arguments responding to unpatentability
arguments in the petition), but the petitioner's opposition to the MTA
must address these arguments without the benefit of seeing all of
patent owner's arguments in the patent owner's response. Similarly,
under the timeline proposed in the RFC, the patent owner must file its
revised MTA or reply to petitioner's opposition to the MTA without
first seeing petitioner's arguments on unpatentability in the
petitioner's reply to the petition.
Response: The Office appreciates this feedback and modifies the
timing of filed papers in the pilot program in response to this
comment, among others. In order for parties to efficiently address all
issues with fully-developed arguments, most due dates in the pilot
program relating to an MTA coincide with filing due dates for
substantive briefing related to the underlying petition. See Appendices
1A and 1B. Thus, as in current MTA practice, the pilot program
coordinates the due dates for many relevant papers in the trial. In
particular, patent owner's MTA is due at the same time as patent
owner's response to the petition, petitioner's opposition to the MTA is
due at the same time as petitioner's reply in support of the petition,
and patent owner's revised MTA or reply to the opposition to the MTA is
due at the same time as patent owner's sur-reply to the petition.
Comment 4: Many commenters addressed the use of ``good cause''
extensions for a final written decision in cases involving MTAs as
presented in the RFC, both supporting and opposing the use of such
extension. See 37 CFR 42.100(c), 42.200(c). Some commenters favored
routine extensions of the statutory deadline of 12 months in order to
increase the times between due dates for filing papers, suggesting that
the MTA itself provides a good cause basis for the extension. Other
commenters disfavored such routine extensions and were concerned that
routine extensions would be contrary to the expedited nature of AIA
proceedings, would make it less likely for co-pending district court
litigation to be stayed during AIA trials, and could be used for
gamesmanship unrelated to the merits of the amendments.
Response: As discussed above, the adjusted timeline in the pilot
program presented herein provides more time for the parties to prepare
their MTA filings within the 12-month statutory deadline, and generally
alleviates a need to extend this deadline. Thus, the Office does not
anticipate extending the 12-month statutory deadline merely because a
case involves an MTA (revised or otherwise) and related subsequent
briefing and discovery (e.g., depositions of declarants). That said,
the Board may, in its sole discretion, extend the 12-month deadline for
good cause, on a case-by-case basis and for the minimum amount of time
necessary to adequately address the issues presented. See 37 CFR
42.100(c), 42.200(c).

Retroactivity

Comment 5: Multiple commenters indicated concerns if the Office
decided to implement the MTA RFC pilot program retroactively to apply
to already-filed petitions. Some commenters were concerned that
petitioners would be unfairly prejudiced because petitions were filed
assuming the current MTA practice would apply, but proceedings would
commence under a different MTA procedure. Some commenters suggested
that retroactively applying the pilot program to all proceedings would
be a violation of the Administrative Procedure Act (``APA'').
Response: As noted above, the effective date of the pilot will be
the publication date of this notice, and the new pilot program will be
available only for AIA trial proceedings that are instituted on or
after the effective date. This effective date does not prejudice either
party unfairly because, among other things: (1) Patent owners may still
proceed, if they choose, with a process that is essentially the same as
the existing MTA process; (2) the timeline for filed papers for both
parties is extended, as compared to the timeline presented in the RFC,
e.g., for an opposition to MTA; (3) as a general matter, there will be
no changes to a scheduling order during a trial to accommodate
additional MTA briefing unless, and only after, patent owner files a
revised MTA, which will occur, if at all, approximately 30 weeks (about
7 months) after institution; (4) patent owners will need to designate
whether they request preliminary guidance from the Board approximately
12 weeks (about 3 months) after institution, and only if they choose to
file an MTA, i.e.,

[[Page 9504]]

therefore, at the earliest, about 3 months after the effective date of
the pilot program; and (5) existing rules already provided for
circumstances in which patent owners could file an additional MTA (37
CFR 42.121(c) and 42.221(c)).

Preliminary Guidance

Comment 6: Commenters largely favored the Board issuing a
preliminary decision of some kind in cases in which an MTA is filed.
Commenters noted that an understanding of the Board's preliminary
assessment of an MTA gives both parties helpful information. For
example, such information could aid patent owners in deciding whether
to file a revised MTA. Further, such information could help inform both
parties' evaluation as to settlement. There was concern, however, that
automatically issuing a preliminary decision in every case with an MTA
could dissuade settlement in some circumstances.
Response: Under the pilot program presented herein, the patent
owner may request, in its initial MTA, that the Board provide
preliminary guidance on the MTA. Thus, the Board will provide
preliminary guidance only if a patent owner requests it.
Comment 7: Commenters expressed varying preferences on the content
of the preliminary decision on an MTA. In particular, some commenters
suggested the preliminary decision should be limited to whether the MTA
meets statutory and regulatory requirements, while other commenters
suggested that the preliminary decision should be more extensive and
address patentability. Commenters advocating for more extensive
preliminary decisions suggested including analysis of claim
construction, compliance with 35 U.S.C. 101 and 112, fact-finding,
legal conclusions, analysis of parties' arguments, prior art
discussion, or suggestions to overcome patentability concerns. Some
commenters were concerned with the increased burden preliminary
decisions would place on the Board. Some commenters also expressed
concern that a preliminary decision might address issues relevant to
the original claims without the benefit of the parties' full briefing
on those claims. Overall, however, a majority of commenters addressing
the issue indicated support for preliminary guidance by the Board in
some form.
Response: As discussed above, the Board will issue preliminary
guidance if the patent owner requests it. The Board will present that
guidance in the form of a short paper (although it may be oral guidance
provided in a conference call, at the Board's discretion) that provides
preliminary, non-binding information to the parties about the MTA. The
Board's preliminary guidance will focus on the limitations added in the
patent owner's MTA, and will not address the patentability of the
originally challenged claims.
With that in mind, the preliminary guidance will likely be
relatively brief and provide an initial discussion about whether there
is a reasonable likelihood that the MTA meets statutory and regulatory
requirements for an MTA. The preliminary guidance also will provide an
initial discussion about whether petitioner (or the record before the
Office) establishes a reasonable likelihood that that the substitute
claims are unpatentable, based on the existing record, including any
opposition to the MTA and accompanying evidence. The Board's guidance
on an MTA during an AIA trial necessarily would be preliminary in
nature and would not be binding on the Board, for example, when it
renders a final written decision.

Opportunity To File Revised MTA

Comment 8: Commenters were almost evenly mixed in their support of
or opposition to providing patent owners an opportunity to file a
revised MTA. Commenters supporting revised MTAs believed that they
offered a fair chance for a patent owner to capture patentable subject
matter, especially after the patent owner understood the Board's
preliminary views of the patentability of proposed substitute claims in
the MTA or on compliance with statutory or regulatory requirements for
the MTA. Commenters opposing revised MTAs were concerned that: The
process could be used solely for tactical advantage, e.g., to increase
the cost or delay proceedings; patent owners would not file their most
substantive claim amendments until filing a revised MTA; and revised
MTAs would not increase the quality of MTAs or the number of granted
MTAs because patent owners would not choose to propose substantial
claim amendments in AIA trials for reasons independent of Board
procedures (e.g., based on concerns relating to intervening rights and
infringement damages). Some commenters expressed concern that allowing
a revised MTA in every case reads out the requirement for a showing of
``good cause'' in 37 CFR 42.121(c) and 42.221(c). Furthermore, some
commenters suggested alternative claim amendment procedures, such as
multiple rounds of claim amendments and multiple sets of alternative
claim amendments filed concurrently, similar to European Patent Office
procedure.
Response: The Office appreciates these comments. As noted above,
the pilot program discussed herein provides patent owners with an
opportunity to file a revised MTA. The Office is persuaded by comments
indicating that this option provides a fair opportunity for patent
owners to amend claims in AIA trials in situations where they wish to
do so. The Office additionally notes that the process in the pilot
program is essentially the same as existing practice unless the patent
owner files a revised MTA, in which case each side generally will have
to file one additional round of papers. Based on information available
at this time, the Office determines that costs associated with
providing this option, if any, are balanced by furthering an important
mission of the Office to provide fair procedures in AIA trials,
including a meaningful opportunity for patent owners to amend their
claims during AIA trials in order to receive appropriately-scoped
claims. The Office finds at this time that the pilot program balances
the various interests and concerns identified by the comments.
In addition, the revised motion to amend is not a second motion to
amend per se, but rather a revised version of the initially-filed
motion to amend. For purposes of the pilot program, to the extent that
a revised motion to amend is deemed to be a second motion to amend,
however, the filing of an opposition to an initial MTA by a petitioner,
or the issuance of preliminary guidance by the Board, provides ``a good
cause showing'' for purposes of the filing of a revised MTA under 37
CFR 42.121(c) and 42.221(c). The Office determines that each of those
papers provides ``good cause'' because they present information
relevant to whether an MTA meets statutory and regulatory requirements
and/or whether proposed substitute claims meet the patentability
requirements under the Patent Act in light of prior art of record.
As noted previously, the program is a ``pilot'' in the sense that
the Office may modify MTA procedures in response to feedback and
experience with the program during and/or after the course of the pilot
program. If concerns expressed in the comments, such as using the
program solely for tactical advantage, are realized, the Office may
modify, terminate, or otherwise alter the pilot program in view of
actual experience. The Office always welcomes feedback from the public
on all aspects of the pilot, including during or after the course of
this program.

[[Page 9505]]

Contingent Motions To Amend

Comment 9: Commenters were almost evenly mixed on whether MTAs
should be contingent, i.e., the Board provides a final decision on the
patentability of a proposed substitute claim only if it determines that
a corresponding original claim is unpatentable, or non-contingent,
i.e., the Board provides a final decision on the patentability of
substitute claims in place of determining the patentability of
corresponding original claims. Some commenters favored every MTA being
contingent, while other commenters favored every MTA being non-
contingent. Some commenters favored a mixed-approach in which patent
owners opting-out of the pilot may file contingent MTAs, while patent
owners proceeding under the pilot program may file only non-contingent
MTAs. The commenters favoring a mixed approach believed that treatment
of MTAs as non-contingent under the pilot represented a fair trade-off
for the proposal in the MTA RFC and would also decrease the Board's
burden under that proposal.
Response: The Office appreciates the comments. Under the pilot
program, consistent with current practice, patent owners may continue
to choose whether MTAs (both initial and revised) are contingent or
non-contingent. As noted above, patent owners may still proceed, if
they choose, with a process that is essentially the same as the
existing MTA process, e.g., regarding the general timing of due dates
and costs associated with filing papers and evidence. In addition,
although a patent owner has an option to file a revised MTA, that
filing triggers deadlines for subsequent related papers that are
extended compared to deadlines in the timeline proposed in the RFC.
Based on information available at this time, the Office is persuaded by
concerns that if the pilot program required MTAs to be non-contingent,
it might inappropriately deter patent owners from filing MTAs on that
basis alone.
As noted above, the program is a ``pilot'' in the sense that the
Office may modify MTA procedures in response to feedback and experience
with the program during and/or after the course of the pilot program.
If it appears, in view of actual experience, that there are sufficient
reasons for requiring MTAs to be non-contingent, the Office may revisit
this issue and modify the pilot program accordingly. The Office always
welcomes feedback from the public on all aspects of the pilot,
including during or after the course of this program.

Opt-Out

Comment 10: Many commenters favored some form of opting-out of the
pilot program. Some commenters believed it should be solely the patent
owner's choice to opt-out, while others believed that both the patent
owner and the petitioner must agree to opt-out of the pilot program.
Some commenters suggested that allowing parties to opt-out would save
Board resources. Some commenters also suggested that, without an opt-
out option, the program would not actually be a pilot because it would
apply to every proceeding with an MTA, potentially creating a problem
under the APA by effectively changing the MTA process completely
without formal rulemaking.
Response: As discussed in detail above, the pilot program is the
same as current MTA practice in many ways, especially regarding the
timing of due dates for already existing papers in an AIA trial. Patent
owners also may choose to proceed with a process that is essentially
the same as the existing MTA process by electing not to obtain
preliminary guidance from the Board or to file a revised MTA. Thus,
with minimal exceptions, current MTA practice is available unchanged,
and now further includes additional available options with the pilot
program.

Amendments Through Reissue or Reexamination

Comment 11: In response to the October 2018 RFC, the Office
received a number of comments and questions relating to reissue or
reexamination as an alternative vehicle for claim amendments. The
comments included requests for clarification regarding existing reissue
and reexamination procedures at the Office.
Response: In response to these comments and questions, in a future
notice, the Office will separately provide information regarding
existing reissue and reexamination options for patent owners, including
procedures for options after a petitioner files an AIA petition
challenging claims of the same patent, after the Board institutes a
trial, and after the Board issues a final written decision.

Dated: March 12, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
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