USPTO Proposes New Amendment Procedure for America Invents Act

by Andrew Dommer

Director Iancu proposed a new amendment procedure on Thursday, October 25. The Director indicates that his proposed changes to the existing amendment practice were intended to avail patent owners of a more viable option for amending claims in Inter Partes Reviews and other AIA trials.

As currently proposed, patent owners would be required to submit motions to amend earlier in trial, affording the Board time to issue preliminary non-binding decisions on those motions early during the course of trial, thus affording patent owners a further opportunity to amend or revise their initial proposed amendments before reaching the final written decision. At various points throughout the proposed process, Petitioners are afforded an opportunity to submit arguments and evidence, both in reply to patent owner motions and following the Board's preliminary decision.

In greater detail, if seeking to amend, a patent owner files a motion to amend within 1.5 months of trial institution. The motion to amend would be limited to a "reasonable" number of substitute claims, and the substitute claims could not enlarge the scope of the originally-issued claims or introduce new matter. Petitioner is thereafter afforded 1.5 months to file a discretionary opposition to the motion to amend, as petitioner bears the burden to prove that the proposed claims are unpatenable by a preponderance of the evidence. The motion to amend and the responsive opposition could introduce expert declarations and evidence, but cross examination will not be permitted until after the Board issues its preliminary decision, 1 month after petitioner's opposition.

From this point forward, the proposed amendment procedure would differ significantly from the existing amendment procedure. The preliminary decision would indicate whether there is a "reasonable likelihood" that (1) patent owner would prevail in establishing that the motion to amend meets statutory and regulatory requirements, and (2) petitioner would prevail in establishing the unpatentability of any proposed substitute claims.

If the preliminary decision favors the petitioner on either of points 1 or 2, a patent owner can file either a simple reply to the preliminary decision, or can file a revised motion to amend that introduces different substitute claims. A simple reply grants petitioner the opportunity to file a sur-reply, while a revised motion to amend triggers a more-involved series of briefings (e.g., a petitioner opposition, a patent owner reply to the opposition, and a petitioner sur-reply).

If the preliminary decision favors the patent owner on both of points 1 and 2, then petitioner gets the first opportunity to submit a reply, with patent owner then able to submit a sur-reply.

The briefing associated with the new amendment procedure would run in parallel to the briefing that occurs on the originally-issued claims, with the two timelines being largely independent of each other (see a graphic of the proposed timeline below). The new amendment process could add significant complexity to a trial, with many additional briefs due within one month of each other and cross-examination of expert testimony on the proposed substitute claims potentially not syncing with cross-examination for the originally-issued claims. The parallel procedures would merge at oral hearing, and a single final written decision would address both the original claims and the proposed substitute claims, as is currently the case.

The USPTO proposes that the new amendment procedure begins as a one-year pilot program, potentially going into effect "shortly after" a December 14 deadline for the public to comment on the proposed amendment procedure. The new procedure would apply in all trials instituted after implementation of the pilot program.

The USPTO Request for Comments is available here.