USPTO Issues NPRM to Codify Amendment Pilot Permanent

While awaiting the overdue Notice of Proposed Rulemaking (NPRM) on the hodgepodge of proposals from last year, the agency has issued a few NPRMs over the past week. First was a proposal to streamline the pro hac vice practice (non-event). Late last week a slightly more interesting NPRM was issued to formalize the provisions of the Motion to Amend (MTA) Pilot Program. (here)

As a reminder, the MTA Pilot Program provides a patent owner who files an MTA with options to request preliminary guidance from the PTAB on the MTA and to file a revised MTA based on the feedback. Of course, it is rarely a good idea to amend claims at the PTAB regardless of the mechanisms used. This is why the agency reports less than 10% of proceedings include an MTA. Still, for those few patent owners interested in amending, the pilot program offers some incremental procedural value.

The NPRM, aside from seeking to codify existing practices, additionally outlines the exercise of discretion in the wake of the Hunting Titan case. That is, what role does the agency play in raising unpatentability grounds of its own for amended claims — particularly given the presumption of validity accorded issued claims?

Prior to Hunting Titan, the agency took the view that it should be a “rare circumstance” when the PTAB might raise a new ground of unpatentability on its own. The CAFC found that standard inconsistent with the agency’s public policy in protecting the public from improvidently granted patent monopolies.

The NPRM proposes that the Board will exercise its discretion in raising new grounds where a petitioner stops participating, or decides not to challenge the amended claims. In exercising that discretion, the Board may request prior art search support from the examining corps; a rare scenario. But at least the academic debate on how unexamined claims might be accorded a presumption of validity has been put to rest.