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“The proposed guidelines would ‘favor of the Board’s authority to think about the whole thing of the artwork of file and to request examination help in an acceptable method when justified by circumstances.’”
The U.S. Patent and Trademark Workplace (USPTO) in the present day revealed a Federal Register Notice (FRN) asserting a discover of proposed rulemaking (NPRM) that will make everlasting sure facets of the Movement to Amend (MTA) Pilot program and revise guidelines across the burden of persuasion governing MTAs.
The MTA pilot program for America Invents Act (AIA) proceedings on the Patent Trial and Enchantment Board (PTAB) stems again to March 2019, when the Workplace revealed a notice of pilot program within the Federal Register asserting that patent house owners would have the chance to hunt preliminary steering on MTAs from the Board itself. The pilot program additionally supplied the chance for patent house owners to file revised MTAs following a petitioner’s transient in opposition to the unique movement to amend. Since launching the pilot program, the USPTO has twice extended the date for terminating this system, which is presently set to run via September 16, 2024.
In May of last year, the Workplace revealed a request for comments (RFC) within the Federal Register searching for public enter on the pilot program and mentioned it was contemplating whether or not to make this system everlasting. The RFC additionally sought enter on the PTAB’s authority to lift grounds sua sponte in the course of the MTA course of. Below the U.S. Court docket of Appeals for the Federal Circuit’s 2022 resolution in Hunting Titan v. DynaEnergetics Europe, the PTAB doesn’t have a duty to sua sponte increase patentability points throughout motions to amend. Nonetheless, the Federal Circuit’s resolution in that case expressed concern that confining the Board’s capacity to lift such points throughout MTA apply undermined the AIA’s intent to reexamine earlier company selections.
An August 2023 MTA Study performed by the USPTO discovered that of the 264 complete pilot MTAs filed, 88% included requests for preliminary steering from the PTAB. On account of the recognition of that possibility and based mostly on public remark, the Workplace is now proposing to implement the 2 choices on the MTA program, i.e.: 1) requesting preliminary steering and (2) submitting, with out pre-authorization, a revised MTA. The Workplace can also be proposing language clarifying that the Board could prolong deadlines beneath the MTA timeline if wanted.
Whereas the Could 2023 RFC sought feedback on whether or not reexamination and reissue have been higher choices for amending claims in AIA proceedings in contrast with the MTA course of, in the present day’s NPRM didn’t make any modifications to present steering on these procedures.
The NPRM additionally proposes modifications round the best way that burdens of persuasion must be allotted throughout MTA apply, particularly because it pertains to patentability grounds raised sua sponte by the PTAB.
Below the U.S. Court docket of Appeals for the Federal Circuit’s 2022 resolution in Hunting Titan v. DynaEnergetics Europe, the PTAB doesn’t have a duty to sua sponte increase patentability points throughout motions to amend. Nonetheless, the Federal Circuit’s resolution in that case expressed concern that confining the Board’s capacity to lift such points throughout MTA apply undermined the AIA’s intent to reexamine earlier company selections. In the present day’s NPRM proposes to de-designate the Searching Titan resolution upon the efficient date of the ultimate rule as a result of it’s “at odds with the proposed broader authority of the Board to lift grounds sua sponte,” in response to the NPRM. The rule would “broaden the physique of proof that the Board could think about and make of file, to now embody the whole proof of file within the continuing, with out limitation, in accordance with Nike, Inc. v. Adidas AG.
The burden of persuasion on the patentability of proposed substitute patent claims has been a subject of authorized debate since not less than the Federal Circuit’s October 2017 en banc resolution in Aqua Products v. Matal, which held that petitioners difficult patent validity on the PTAB bore the burden of persuasion on the patentability of proposed substitute claims submitted in an MTA. Along with its Searching Titan ruling, the Federal Circuit has issued different selections since Aqua Merchandise impacting the scope of MTA apply and consequently the scope of a petitioner’s burden of persuasion. As an illustration, the Federal Circuit’s 2022 precedential resolution in American National Manufacturing v. Sleep Number Corp. held that patent house owners submitting MTAs in response to grounds of patentability raised in an inter partes evaluation (IPR) petition are in a position to embody extra amendments to handle patentability points exterior of the 35 U.S.C. § 102 novelty and 35 U.S.C. § 103 obviousness grounds, to which IPR proceedings are restricted.
The proposed guidelines would “favor of the Board’s authority to think about the whole thing of the artwork of file and to request examination help in an acceptable method when justified by circumstances.” In addition they would implement the present MTA pilot program apply of permitting the Board to hunt examination help in sure circumstances, equivalent to “when the petitioner ceases to take part altogether in an AIA trial wherein the patent proprietor information an MTA and the Board nonetheless workout routines its discretion to proceed with the trial thereafter.” In line with the NPRM:
“The proposed rule confirms the Board’s discretion to hunt examination help by clarifying that the Workplace could conduct a previous artwork search on the Board’s request when no petitioner opposes or all petitioners stop to oppose an MTA.”
“Making the [MTA Pilot] program everlasting strengthens the predictability and certainty of post-grant trial proceedings earlier than the Board,” mentioned USPTO Director Kathi Vidal in in the present day’s announcement of the NPRM.
Feedback may be submitted via the Federal eRulemaking Portal till Could 3, 2024.
Picture Supply: Deposit Photographs
Writer: stuartmiles
Picture ID: 12651824
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