USPTO seeks comments on motions to amend changes
The US Patent and Trademark Office (USPTO) is seeking comments on a new claim amendment process for post-grant proceedings.
Andrei Iancu, director of the USPTO, made the announcement during his keynote speech at the the 2018 AIPLA Annual Meeting in Washington, DC on Thursday, October 25.
“I believe that the current amendment process in America Invents Act (AIA) proceedings is not working as intended,” said Iancu.
Claim amendments have been relatively rare, added Iancu in his keynote, stating that they are filed in less than 10% of AIA trials and are granted infrequently.
“But the AIA statute specifically provides for claim amendments in IPRs, so in order to fully implement the intent of the AIA, we must find a way to make this amendment process feasible and meaningful,” said Iancu.
The following day, October 26, the USPTO published its request for comments 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 Patent Trial and Appeal Board (PTAB).
Raghav Bajaj, a lawyer at Haynes and Boone’s Austin, Texas office, explained that the primary change is a two-stage process for motions to amend.
First, the patent owner proposes an amendment, to which the petitioner may respond.
This is followed by a preliminary decision from the PTAB on the merits of the motion. The progression of the second stage is dependent on this decision.
If the board’s decision finds that the proposed amendment fails to meet the statutory or regulatory requirements, the patent owner may propose further amendments, said Bajaj. Alternatively, if the board finds that the claims do meet the requirements to be granted, the petitioner can file new evidence in opposition.
“Another interesting factor is that it appears that amendments will be judged under the Phillips claim construction standard, unlike typical prosecution in which claims are judged under the broadest reasonable interpretation (BRI) standard,” said Bajaj.
In October, the PTAB published the final rule for claim construction in AIA proceedings. The Phillips claim construction rule will replace the BRI standard and apply to all petitions filed on or after November 13, 2018.
Bajaj believes that the new amendment procedure may increase costs for both parties in the proceedings, as it adds additional briefing if the patent owner wishes to amend its claims.
“The proposal seems to suggest that this ‘pilot programme’ is mandatory for all future proceedings; the parties cannot choose to operate under the prior regime,” he added.
Bajaj expects parties on both sides to be very active in commenting.
“Based on the changes in the final rule-making that stemmed from comments on prior Phillips notice of proposed rule-making, the USPTO has shown a willingness to change their initial positions,” he concluded.
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