On October 18, 2024, the United States Patent and Trademark Office’s (USPTO) final rules governing Motion to Amend practice and procedures before the Patent Trial and Appeal Board (PTAB) officially went into effect. These rules build on the Motion to Amend (MTA) Pilot Program, initiated in 2019, and reflect public feedback gathered through multiple stages of review and refinement. The final rules codify procedures introduced in the MTA Pilot Program and provide patent owners with greater flexibility when amending claims in America Invents Act proceedings — including inter partes review, post-grant review, and derivation proceedings. By formalizing procedures from the MTA Pilot Program and clarifying burden-allocation rules, the USPTO aims to “promote the issuance of robust and reliable patents” and to “strengthen the predictability and certainty of post-grant trial proceedings before the PTAB.”¹

Key points

• Adopts rules from the MTA Pilot Program for preliminary guidance and revised MTAs
• Provides the patent owner with an opportunity to revise its MTA after receiving an opposition to the original MTA or after receiving the Board’s preliminary guidance
• Grants discretion for the Board to raise new grounds of unpatentability sua sponte
• Clarifies the Board’s authority to consider all evidence of record in the proceeding, including information identified in response to PTAB-initiated examination assistance and evidence from related proceeding(s)
• Provides that any new ground of unpatentability raised by the PTAB must be proven by a preponderance of the evidence

Background

The USPTO introduced the MTA Pilot Program in March 2019 to provide patent owners with an opportunity to receive preliminary guidance from the PTAB on their MTAs and to submit revised MTAs. Over the years, the USPTO has twice extended the program in response to positive feedback from patent owners and other stakeholders. In May 2023, the USPTO published a Request for Comments in the Federal Register to gather public input on making the program permanent and refining aspects of the MTA process. A Notice of Proposed Rulemaking (NPRM) followed in March 2024, which signaled the USPTO’s intention to adopt the program permanently while soliciting further public comments to finalize the rules. The final rules that became effective October 18, 2024, largely adopted the proposed rules from the NPRM with some changes responsive to public comments.

Final rules relating to preliminary guidance, petitioner sur-reply, and revised motions to amend

A patent owner may file an “original motion to amend” and may choose to receive the Board’s preliminary guidance on the motion. § 42.121(a). The patent owner must file the request for preliminary guidance as part of the original MTA. § 42.121(a)(ii).

In the preliminary guidance, the Board provides (1) its “initial, preliminary views on the original motion to amend, including whether the parties have shown a reasonable likelihood of meeting their respective burdens of persuasion,” and (2) “notice of any new ground of unpatentability discretionarily raised by the Board.” § 42.121(e)(1). The Board may also determine whether to request extension of “the final written decision deadline more than one year from the date a trial is instituted.” § 42.121(e)(1). The Board’s issued preliminary guidance is not a final agency action and is not binding on the Board in any subsequent decision in the proceeding. §42.121(e)(2).

In response to the preliminary guidance, a patent owner can file a reply to the petitioner’s opposition to MTA and/or to the preliminary guidance or file a revised MTA. §41.121(e)(3). The petitioner can respond in a sur-reply. While the patent owner can use new evidence for the reply or the revised MTA, the petitioner cannot use any new evidence for the sur-reply, but “may comment on any new evidence filed with the reply and/or point to cross-examination testimony of a reply witness, if relevant to the arguments made in the reply brief.” §41.121(e)(3).

If the patent owner does not file a reply to the preliminary guidance or does not file a revised MTA, the petitioner can file a reply to the preliminary guidance, “but such a reply may only respond to the preliminary guidance and may not be accompanied by new evidence.” §41.121(e)(4). The patent owner can file a sur-reply, “but that sur-reply may only respond to the petitioner’s reply and may not be accompanied by new evidence.” §41.121(e)(4).

No further motion to amend (beyond the original MTA) can be filed without the Board’s authorization. §41.121(c). A party can seek the Board’s authorization by showing good cause or with a joint request of the petitioner and the patent owner “to materially advance a settlement.” §41.121(c). In determining whether to authorize an additional MTA, the Board considers whether a petitioner has submitted supplemental information after the filing of the patent owner’s response. §41.121(c).

The only exception to the prior authorization requirement is when the patent owner files a revised MTA. §41.121(f). The patent owner can “file one revised motion to amend after receiving an opposition to the original motion to amend or after receiving the Board’s preliminary guidance.” §41.121(f). The revised MTA would effectively replace the original MTA. §41.121(f)(3). The Board may determine to request extension of the final written decision deadline upon receiving the revised MTA. §41.121(f).

The revised MTA “must be responsive to issues raised in the preliminary guidance or in the petitioner’s opposition to the motion to amend.” §41.121(f)(2). The revised MTA “must include one or more new proposed substitute claims in place of the previously presented substitute claims.” §41.121(f)(2). Each new proposed substitute claim must present a new claim amendment. §41.121(f)(2).

Final rules addressing scope and content of motion to amend, including written description support

The scope of an MTA is limited to amendment(s) that respond to a ground of unpatentability involved in the proceeding. §41.121(a)(2). An amendment cannot seek to broaden the scope of the claims of the patent or introduce new subject matter. §41.121(a)(2).

An MTA can “cancel a challenged claim or propose a reasonable number of substitute claims.” §41.121(a)(3). An MTA must set forth support in the original disclosure of the patent for each of the proposed substitute claim. §41.121(b).

Also, an MTA must show a list of the claims, a clear presentation of the amendments, and, if applicable, “support in an earlier-filed disclosure for each claim for which the benefit of the filing date of the earlier-filed disclosure is sought.” §41.121(b).

Final rules addressing burdens of persuasion and the scope of record evidence

It is a patent owner’s burden to show “by a preponderance of the evidence” that the MTA meets the requirements noted above — which refer to §41.121(a)(2) regarding scope, §41.121(a)(3) regarding substitute claims, and §41.121(b) regarding content— as well as in paragraphs (1) and (3) of 35 U.S.C. 316(d). §41.121(d)(1).

In challenging an MTA, a petitioner bears the burden to show “by a preponderance of the evidence” that the proposed substitute claims are unpatentable. §41.121(d)(2).

Irrespective of the patent owner’s and the petitioner’s burdens, the Board can exercise its discretion to (1) grant or deny an MTA or (2) “raise a new ground of unpatentability in connection with a proposed substitute claim.” §41.121(d)(3). If the Board raises a new ground of unpatentability, the parties have an opportunity to respond. §41.121(d)(3).

Where the Board exercises its discretion to raise a new ground of unpatentability, “the Board must determine unpatentability based on a preponderance of the evidence of record.” §41.121(d)(4). The Board may consider “all evidence of record in the proceeding,” as well as “any evidence in a related proceeding before the Office and evidence that a district court can judicially notice.” §41.121(d)(3).

The Board can also initiate examination assistance and use the information identified therein to raise a new ground of unpatentability. §41.121(d)(3)). The Board’s request for and the result of examination assistance will be made of record. §41.121(d)(3).

Final rules relating to examination assistance

The Board can “request the examination assistance at any time after any motion to amend has been filed if no petitioner opposes or all petitioners cease to oppose the motion to amend, or if the Board determines that a deficient prior art challenge in an opposition to the motion to amend warrants a search for additional prior art.” §41.121(d)(3).