The United States Patent and Trademark Office (“USPTO” or the “Office”) recently proposed new AIA trial procedures aimed at boosting the success rate of patent owner motions to amend. The new procedures, if made effective, would allow patent owners to preview the Board’s analysis of a motion to amend and to then revise their position to address deficiencies identified by the Board.
The proposed procedure contemplates that a motion to amend may involve up to six party briefs and two panel opinions. As per current amendment practice, the patent owner would first file a motion to amend, and the petitioner would have an opportunity to oppose that motion. Under the proposed changes, the panel would then issue a preliminary opinion on the merits of the patent owner’s motion. If the preliminary opinion indicates that the motion is likely to be denied, the patent owner would be permitted to either reply to that preliminary opinion or submit a revised motion to amend, presumably shoring up any deficiencies identified by the Board. The petitioner could then file an opposition to the revised motion, and the parties would have opportunities to file subsequent replies and sur-replies. The USPTO’s proposed briefing schedule for the new procedure is shown below.
The proposed changes are intended to give patent owners a more meaningful opportunity to amend claims during an AIA trial. Beginning in 2016, the USPTO undertook a study to determine the outcomes of motions to amend, including the number of motions filed, the number of motions that reached a final decision, the disposition of motions that requested substitute claims, and the reasons provided for denying entry of substitute claims. The data reveals that of the 3928 AIA trials conducted through March 31, 2018 (including both completed AIA trials and pending AIA trails), patent owners filed motions to amend in nearly 10% (361) of the trials, a percentage that appears to be growing. The Board ruled on a motion to amend requesting to substitute claims in 62% (189) of the 305 completed AIA trials with amendment motions as of March 31, 2018. Of the 189 motions to amend requesting to substitute claims that the Board decided, the Board denied the motion to amend in a staggering 90% (171) of the trials—most often, finding that the amended claims failed to comply with 35 U.S.C. §§ 102, 103, or 112.
The results of the USPTO’s study, along with feedback from the public, including some concerns regarding the grant rate of claim amendments in AIA trial proceedings, prompted the development of the new amendment practice. The USPTO believes that the revised procedures—which are more favorable to patent owners than current procedures—may level the playing field between patent owners and petitioners and provide a more balanced amendment process.
The USPTO is also seeking comments from the public regarding whether it should engage in rulemaking to allocate the burden of persuasion with respect to the patentability of amended claims as suggested by the Federal Circuit in its decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 20170 (en banc). Specifically, the USPTO requests feedback on whether it should allocate that burden as set forth in the order in Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082 (Paper 13 at 4) (PTAB April 25, 2018), which provides that “the burden of persuasion will ordinarily lie with the petitioner to show that any proposed substitute claims are unpatentable” and that the “Board itself also may justify any finding of unpatentability by reference to evidence of record in the proceeding.”
The USPTO also noted that it anticipates implementing a pilot program shortly after the comment deadline for the Request for Comments, ending on December 14, 2018. The pilot program is currently estimated to run for at least one year, with the possibility for an extension. Once it begins, the pilot program is expected to include all new AIA trials that are instituted.
 The Request for Comments was published in the Federal Register on October 29, 2018 and is available here: https://www.gpo.gov/fdsys/pkg/FR-2018-10-29/pdf/2018-23187.pdf.