[Federal Register Volume 87, Number 191 (Tuesday, October 4, 2022)]
[Notices]
[Pages 60134-60135]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-21472]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No.: PTO-P-2021-0042]


Extension of the Patent Trial and Appeal Board Motion To Amend 
Pilot Program

AGENCY: United States Patent and Trademark Office, 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, initiated on March 
15, 2019, and first extended on September 16, 2021. The MTA Pilot 
Program provides additional options for a patent owner who files an MTA 
in an America Invents Act (AIA) trial proceeding before the Patent 
Trial and Appeal Board (PTAB). In particular, the 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 MTA 
Pilot Program also provides timelines for briefing to accommodate these 
options.

DATES: Applicability Date: October 4, 2022. Duration: The MTA Pilot 
Program will run until September 16, 2024 (or it may end sooner if 
replaced by a permanent program after notice-and-comment rulemaking). 
The USPTO may further 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: Miriam L. Quinn, Acting Vice Chief 
Administrative Patent Judge; or Melissa Haapala, Vice Chief 
Administrative Patent Judge; at 571-272-9797 ([email protected] or 
[email protected], respectively).

SUPPLEMENTARY INFORMATION: A patent owner in an 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 public feedback about the PTAB's MTA 
practice, 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. See Request for Comments on MTA Practice 
and Procedures in Trial Proceedings Under the America Invents Act 
Before the Patent Trial and Appeal Board, 83

[[Page 60135]]

FR 54319 (Oct. 29, 2018). The majority of comments supported the PTAB 
issuing preliminary guidance in cases involving an MTA, and commenters 
were almost evenly mixed in supporting or opposing the opportunity for 
a patent owner to file a revised MTA.
    On March 15, 2019, in response to these public comments, the USPTO 
issued a Federal Register Notice detailing the MTA Pilot Program. See 
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 (2) a patent owner 
may choose to file a revised MTA after receiving a petitioner's 
opposition to the original MTA and/or the PTAB's preliminary guidance 
(if requested). If a patent owner does not elect either option, then 
AIA trial practice, including MTA practice, is essentially unchanged 
from the practice prior to the implementation of the MTA Pilot Program.
    The USPTO subsequently extended the MTA Pilot Program on September 
16, 2021, to run through September 16, 2022. The USPTO presented the 
results of the MTA Pilot Program through March 31, 2022, in Installment 
7 of the Motion to Amend Study. 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.
    Now that stakeholders have had experience with the MTA Pilot 
Program, as well as access to the results of the Motion to Amend Study, 
the USPTO plans to issue a Request for Comments regarding the MTA Pilot 
Program to gather stakeholder feedback and suggestions on the program 
and on amendment practice generally and to determine whether to make 
the program permanent through notice-and-comment rulemaking. The USPTO 
is extending the MTA Pilot Program for a second time, through September 
16, 2024, while it gathers public input. The requirements for the 
program remain as set forth in the original notice without 
modification.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2022-21472 Filed 10-3-22; 8:45 am]
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