AIPLA Comments on USPTO's Motion To Amend Pilot Program
Written August 2, 2023
Arlington, VA. August 2, 2023 - The American Intellectual Property Law Association (AIPLA) submitted comments to the U.S. Patent and Trademark Office (“Office”) on their Motion to Amend Pilot Program and Rules of Practice to Allocate the Burdens of Persuasion on Motions to Amend in Trial Proceedings Before the Patent Trial and Appeal Board (PTAB).
The comments recognize the Office’s attempts to improve the Motion to Amend practice and generally support the efforts to make MTAs a more viable option as part of a trial proceeding. The comments further note that updated data is needed to assess how the MTA Pilot Program impacted a patent owner’s ability to amend claims successfully, but regardless of whether patentees use the MTA process, it should be fair and provide a predictable method with a reasonable probability of success in amending claims during AIA proceedings. The comments also suggest that reissue and reexamination proceedings initiated by a patent owner are important alternatives and provide a clear benefit to patent owners. Furthermore, AIPLA’s comments support having a preliminary non-binding decision by the Board and providing patent owners with a second opportunity to amend their claim, and that such guidance and flexibility make MTAs more viable than they have been.
To view the complete comments, please download the comment letter posted to the right of this page