Takeaways From Motion to Amend Pilot Program Chat

by | Jul 18, 2023 | Amendment Practice, PTAB News

By John Wright and John Marlott –

The USPTO hosted a “Boardside Chat” on June 15, 2023, to discuss the Motion to Amend Pilot Program, including the recent call for public input on the PTAB’s existing claim amendment procedures and potential rule changes.  The speaker panel included two PTAB judges, a PTAB attorney, and two PTAB practitioners.  During the event, the panelists referenced a USPTO slide deck available here.

The MTA Pilot Program began on March 15, 2019, and as we have previously reported, provides a patent owner (“PO”) with two options not previously available:

  1. PO may choose to receive preliminary guidance from the Board on its proposed motion to amend; and
  2. PO may choose to file a revised MTA after receiving the petitioner’s opposition to an initial MTA and/or after receiving the Board’s preliminary guidance (if requested)

The Boardside Chat panel first discussed the fundamentals of the MTA process as well as the December 2020 revisions to the MTA burdens of persuasion.  The panel presentation also included statistical data reflecting trends in the MTA filing process, noting that the number of MTAs filed has remained more or less constant before and after implementation of the Pilot Program.  The data also showed that in almost half of the cases, the patent owner elected to file a revised MTA.  Finally, the MTA grant rate of 25% for the Pilot Program is well above the 14% grant rate from pre-Pilot MTA filings.

The panel also discussed practical implications of the MTA Pilot Program.  The PTAB practitioners highlighted some of the potential effects of MTA filings, including potential impacts on parallel litigation and ongoing prosecution involving the patents-at-issue.  They emphasized the importance of strategic thinking about which substantive positions to take in a MTA.  They also pointed out that many practitioners make the common mistake of failing to thoroughly address each of the PTAB’s opinions provided in the preliminary guidance when filing a revised MTA.

The Boardside Chat concluded with a discussion of the USPTO’s outstanding Request for Comments regarding the MTA Pilot Program.  The panel observed that the increase in MTA grant rate via the Pilot Program hasn’t directly led to an increase in the number of MTA filings overall.   Thus, as part of the RFC, the USPTO is seeking information from practitioners about their willingness to utilize the Pilot Program.  The nine questions included in the RFC are directed to two main topics: 1) MTA Pilot Program experiences by practitioners, and the potential to make the Program permanent; and 2) the use of PTAB-raised grounds and the burden of persuasion.  The request for comment period runs through July 24, 2023.

We will continue to monitor the USPTO’s management of the MTA Pilot Program.

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John Marlott

Partner at Jones Day
John Marlott brings more than 30 years of intellectual property law experience to his role as lead counsel in IP disputes for Jones Day clients. He focuses on high-stakes district court and ITC patent litigation, post-grant patent proceedings before the PTAB, and appeals to the U.S. Court of Appeals for the Federal Circuit.