USPTO Issues New Rules on Motions to Amend in IPRs

On September 18, 2024, the United States Patent and Trademark Office (USPTO) issued significant updates to the rules governing motions to amend in inter partes review (IPR) proceedings. These changes mark a crucial development in patent litigation, aiming to streamline the process and improve fairness for both patent owners and challengers. This blog will explore the impact of these new rules and how they shape the future of patent amendment procedures in IPRs.

What are Inter Partes Reviews (IPRs)?

An IPR is a process that allows third parties to challenge the validity of a granted patent before the Patent Trial and Appeal Board (PTAB). Since its introduction as part of the America Invents Act (AIA), IPRs have become a vital tool in patent disputes. They offer a cost-effective and efficient alternative to traditional litigation by allowing petitioners to argue that a patent’s claims are unpatentable based on prior art.

Motions to amend during IPRs allow patent owners to adjust the scope of their claims to overcome challenges. However, historically, success rates for such motions have been low, prompting the USPTO to introduce new rules to make the process fairer and more transparent.

Historical Context of Motions to Amend in IPR Proceedings

When IPRs were introduced as part of the AIA, motions to amend were intended to provide patent owners with a fair chance to modify their claims in response to challenges. However, from the outset, patent owners struggled with the motion to amend the process. The PTAB often denied motions to amend, citing procedural issues, inadequate support in the patent’s original disclosure, or failure to overcome prior art challenges.

One of the primary challenges faced by patent owners was the high standard of proof required to amend claims. The PTAB’s previous reluctance to grant these motions was due, in part, to the adversarial nature of IPR proceedings, where petitioners and patent owners engage in a contentious dispute over the validity of the patent. Another issue was the limited opportunity for patent owners to revise or correct their motions if the PTAB raised concerns about the proposed amendments. These factors contributed to a very low success rate for motions to amend, which hovered around 17% before the USPTO intervened with changes.

The USPTO’s Motion to Amend Pilot Program

The USPTO introduced the Motion to Amend (MTA) Pilot Program in response to these challenges in 2019. The pilot program was designed to give patent owners more flexibility by allowing them to request preliminary guidance from the PTAB before filing a final motion to amend. Additionally, it introduced the option for patent owners to file a revised motion after receiving this guidance.

The pilot program showed promising results, with motions to amend success rates increasing from 17% before the pilot to 24% afterward. These positive outcomes prompted the USPTO to make several provisions of the pilot program permanent in its latest rule changes.

New Rules Introduced by the USPTO in 2024

The new rules, which took effect on October 18, 2024, make permanent several provisions of the MTA Pilot Program. These rules provide patent owners with more flexibility in amending their claims and give them additional opportunities to address the PTAB’s concerns. The key components of the new rules include:

The option for patent owners to request preliminary guidance from the PTAB on their motion to amend.
The ability to file a revised motion to amend after receiving preliminary guidance.
Clarified procedures for the burden of proof on both patent owners and petitioners.
PTAB’s discretion to raise new grounds of unpatentability on its own, even if not raised by the petitioner

While the new rules largely codify the practices introduced in the pilot program, there are some differences. For example, the new rules provide clearer guidelines on the division of burdens between patent owners and petitioners and allow the PTAB to raise new grounds of unpatentability without input from the petitioner if necessary.

Don’t leave your ideas unprotected, watch our video to learn Trade Secret Fundamentals For In-House Counsel today!

Preliminary Guidance in Motions to Amend

A key feature of the new rules is the formalization of preliminary guidance. Patent owners can now request non-binding feedback from the PTAB on their motion to amend before a final decision is made. This guidance provides insights into whether the proposed amendments are likely to succeed, offering a crucial opportunity for patent owners to refine their motions..

Preliminary guidance serves as an essential tool for patent owners, as it gives them a better chance to address potential issues early in the process. It also benefits petitioners by clarifying areas of contention and setting expectations for the final decision.

Filing a Revised Motion to Amend

Under the new USPTO rules for inter partes review (IPR) proceedings, patent owners now can file a revised motion to amend after receiving preliminary guidance from the Patent Trial and Appeal Board (PTAB). This new procedural step aims to improve the chances of a successful amendment by allowing the patent owner to address any deficiencies identified in the PTAB’s guidance or the petitioner’s opposition.

Patent Owners’ Ability to File a Revised Motion to Amend

The ability to file a revised motion is a significant improvement over the previous system. Before this rule, patent owners were often left with only one chance to propose amendments, which limited their ability to correct errors or address concerns raised by the PTAB or petitioners. With the new rules, patent owners can now submit a revised motion that directly responds to the feedback from preliminary guidance, increasing the likelihood of success in getting amendments approved.

The revised motion replaces the original motion to amend in the proceeding and must:

Address issues raised in the PTAB’s preliminary guidance.
Be responsive to the petitioner’s opposition to the original motion.
Present new claim amendments, arguments, or evidence that relate directly to the concerns identified in earlier stages.

This flexibility allows patent owners to fine-tune their amendments to better withstand scrutiny during the review process.

Timelines and Procedural Requirements for Filing Revised Motions

Stage	Action	Timeframe	Key Procedural Requirements
Initial Motion to Amend	The patent owner files a motion to amend, proposing changes to the patent claims.	Typically filed after the PTAB institutes IPR proceedings.	The motion must comply with statutory requirements, including sufficient written description support.
Preliminary Guidance Issued by PTAB	PTAB issues non-binding preliminary guidance on the proposed amendments.	Within 4 weeks after the patent owner requests it (optional).	Preliminary guidance addresses whether the motion to amend is likely to be granted.
Filing a Revised Motion to Amend	The patent owner submits a revised motion to amend based on PTAB guidance and the petitioner’s opposition.	Within 6 weeks after the preliminary guidance is issued.	The revised motion replaces the original and must respond to issues raised in the guidance or by the petitioner.
Petitioner’s Opposition to Revised Motion	The petitioner may file an opposition to the revised motion to amend.	Typically within 6 weeks of the revised motion being filed.	The opposition must address the new changes in the revised motion.
Patent Owner’s Reply	The patent owner may file a reply to the petitioner’s opposition to the revised motion.	Within 1 month of receiving the opposition.	The reply must address any new arguments raised in the petitioner’s opposition.
Final Written Decision by PTAB	PTAB issues a final decision on the revised motion to amend the overall IPR.	Within 1 year of the institution of the IPR (extensions possible).	The final decision takes into account the revised motion, opposition, and replies.

Key Considerations for Filing a Revised Motion

Responsiveness: The revised motion must specifically address the issues raised in the PTAB’s preliminary guidance or in the petitioner’s opposition.
Timeliness: Filing deadlines are crucial, and patent owners must adhere to the strict timeline to avoid procedural setbacks.
Substitution: The revised motion entirely replaces the original motion, meaning all proposed substitute claims must be included in the revised filing. Patent owners cannot rely on the original claims.
Burden of Proof: The patent owner still carries the burden to prove that the revised amendments comply with statutory requirements, while the petitioner maintains the burden of proving the unpatentability of the revised claims.

The revised motion to amend process provides flexibility for patent owners to fine-tune their claim amendments, making it an important tool for improving outcomes in IPR proceedings.

Burden of Proof: Patent Owners vs. Petitioners

The burden of proof in motions to amend during inter partes review (IPR) proceedings has been a critical aspect of the new rules introduced by the USPTO. The new regulations clarify the allocation of responsibilities between the patent owners and petitioners, which improves transparency and provides a structured approach to amendments.

Breakdown of the Burden of Persuasion in Motions to Amend

The patent owner has the initial responsibility to demonstrate that the proposed amended claims comply with statutory and regulatory requirements. On the other hand, the petitioner must prove that the proposed amended claims are unpatentable, typically based on prior art or other grounds of invalidity.

Respective Obligations of Patent Owners and Petitioners Under the New Rules

The new rules specify that the burden of persuasion is shared but distinct:

Patent Owners: Must show by a preponderance of the evidence that their amendments are valid and comply with the legal framework.
Petitioners: Have the burden to prove that the proposed amended claims are unpatentable, also by a preponderance of the evidence.

This dual structure balances the interests of both parties and ensures that neither party can simply shift the burden without offering substantial evidence to support their position.

Codified Division of Burdens Under the New Rules

Aspect	Patent Owners’ Burden	Petitioners’ Burden
Motion to Amend Requirements	Patent owners must show compliance with legal requirements for amending claims, such as clarity and scope under 37 CFR § 42.121(d).	No obligation unless opposing the amendment. Petitioners may respond by contesting the validity of the amendments.
Proof of Validity	The patent owner must provide sufficient evidence showing that the proposed amendments are valid under existing patent law (e.g., supported by the original patent application).	Petitioners do not have a burden to prove validity; instead, they focus on opposing the amendments by highlighting their deficiencies.
Unpatentability Grounds	No burden to prove unpatentability. The patent owner focuses solely on proving compliance with the law.	Petitioners must prove the unpatentability of the proposed claims based on prior art or other legal standards, using a preponderance of the evidence standard.
Board’s Discretion	Patent owners cannot rely on the Board to raise unpatentability issues on their behalf. They must address all legal standards for amendments.	If the petitioner does not sufficiently oppose the amendment, the Board may raise additional unpatentability concerns independently, giving both parties a chance to respond.
Revised Motions to Amend	Patent owners have the right to file a revised motion if the PTAB’s preliminary guidance suggests deficiencies.	Petitioners can oppose the revised motion, but the onus remains on proving unpatentability.

The new USPTO rules strike a balance by clearly dividing the burden of persuasion between patent owners and petitioners. Patent owners must ensure their amendments comply with legal standards, while petitioners bear the responsibility of proving that these amendments are unpatentable. This structure supports fairness and transparency in the IPR amendment process.

The Board’s Discretion to Raise New Grounds of Unpatentability

One of the more contentious aspects of the new rules is the PTAB’s expanded discretion to raise new grounds of unpatentability, even when the petitioner does not oppose the motion to amend. This discretion arises from Federal Circuit rulings, which stress the PTAB’s role in protecting patent integrity by upholding valid claims.

Impact of the New Rules on PTAB Proceedings

While the new rules have generally been welcomed for their potential to increase the fairness of IPR proceedings, they also introduce additional complexity. The ability to request preliminary guidance and file revised motions, while beneficial, creates a more congested briefing schedule. Despite this, the overall impact on case timelines is expected to be minimal, as the USPTO declined to extend deadlines for PTAB decisions.

Clarification of Written Description Requirements

The new rules also emphasize the importance of providing adequate written description support for proposed amendments. This ensures that changes to patent claims align with the original disclosure, minimizing the risk of invalid amendments. Patent owners must now clearly outline this support within their motion.

Examination Assistance in PTAB Proceedings

Another significant change is the PTAB’s discretion to seek examination assistance from patent examiners when considering a motion to amend. This can occur when the petitioner does not challenge the motion or when the opposition is deemed insufficient. By involving examiners, the PTAB ensures a more thorough evaluation of the patentability of amended claims.

Extensions and Deadlines for Filing and Reviewing Motions

While some commenters suggested extending the deadlines for IPR decisions involving motions to amend, the USPTO opted to maintain the existing timelines. However, the PTAB may grant extensions on a case-by-case basis if there is good cause, ensuring flexibility where needed.

Comparison to Other Post-Grant Procedures

People often compare the motion to amend process in IPRs to other post-grant options like reissue and reexamination. While IPRs offer a more adversarial approach, reissue and reexamination allow patent owners to pursue amendments outside of a litigation context. Choosing the best option depends on the specific circumstances of the patent owner’s case.

Conclusion

Recent updates to amendment rules in inter partes review (IPR) proceedings enhance fairness and efficiency. This change aims to improve the patent amendment process. With these changes, patent owners now have enhanced opportunities to refine their claims and better navigate the complexities of patent litigation. At Stevens Law Group, our team of seasoned patent attorneys and agents is ready to leverage our extensive technical expertise and legal knowledge to guide you through these evolving processes.

If you are navigating patent challenges or considering amendments, don’t hesitate to reach out to us for personalized legal advice. Let us help you protect your innovations effectively. Contact Stevens Law Group today to schedule a consultation and empower your patent strategy!

FAQs

What is a motion to amend in an IPR?
- A motion to amend lets a patent owner modify claims in an IPR to respond to challenges from a petitioner.
How do the new rules improve success rates for motions to amend?
- The introduction of preliminary guidance and the option to file revised motions have improved the chances of successful claim amendments.
What is the role of preliminary guidance in the new rules?
- Preliminary guidance provides patent owners with early feedback on their motion to amend, helping them address potential issues before a final decision.
How does the burden of proof work in motions to amend under the new rules?
- Patent owners must prove their amendments are valid, while petitioners bear the burden of showing that the proposed amendments are unpatentable.
Can the PTAB extend deadlines for IPR decisions involving motions to amend?
- The PTAB may extend deadlines individually for good cause, but the new rules don’t allow automatic deadline extensions.

References:

Federal Register / Vol. 89, No. 43 / Monday, March 4, 2024 / Proposed Rules

Federal Register / Vol. 89, No. 181 / Wednesday, September 18, 2024 / Rules and Regulations

USPTO issues new rules on motions to amend in IPRs