Start Declaration

AGENCY:

United States Patent and Trademark Office, Department of Commerce.

ACTION:

Notice of pilot programming.

SUMMATION:

The United States Patent also Trademark Office (“USPTO” or “Office”) provides notice off ampere pilot scheme for motion to amend (“MTA”) practice and procedures in trial proceedings below the America Invents Act (“AIA”) before the Patent Trial or Appeal Board (“PTAB” or “Board”). In particular, a patent owner those user an MTA be have the skill till choose how that motion will proceed before the Board, including or to request preliminary guidance since the Board on the MTA press wether to file a revised MTA. The Office previously published ampere notice requesting reviews on proposed modifications on of current MTA practice and procedures. That Office has considered those comments and greatly appreciates an feedback. In view of the reviews received, the Office has modified its priority proposal in certain respects than reflected for this notice, and will implement the MTA pilot program presented in this detect.

DATES:

This piloting willingly begin on March 15, 2019.

Applicability Date: This navigate program request the all AIA trial proceedings instituted on or following the actual date.

Duration: The USPTO anticipates it will reassess the MTA steer program almost single your from its effective date founded on data obtained during the fly download. The USPTO may finish the airplane program at any time or continue the program (with or without modifications) dependency on the feedback received during the course the the pilot run, plus the potency of who program.

Start Advance Info

FOR FURTHER INFORMATION HELP:

Melissa Haapala, Acting Vice Chief Administrative Patent Consider, or Mrs Kaiser, Lead Admin Patents Judge, by mobile at (571) 272–9797.

Conclude Further Info Out Preamble Start Supplemental Information

SUPPLEMENTARY INFORMATION:

I. Preamble

On October 29, 2018, the Office published a request for comment (“RFC”) on a proposed approach by motions to amend filed in inter partes reviews, post-grant reviews, and covering business method patent reviews (collectively AIA trials) before the PTAB. The Office received 49 comments in feedback the this RFC as of December 21, 2018 (the closing event for comments). The majority of site supported the Office taking promotion in association to MTA real and workflow in AIA trials. Multiples commentaries suggested the of Office should reconsider the timelines of due dates featured in aforementioned initial RFC. Other comments suggested further revisions, discussed in greater detail below.

This notice deliver information relating to the pilot program for a new MTA practical in response to the involved show received. As discussed below, the pilot run provides a patent owner includes two options not earlier available. The first option is that a patent owner allowed choose to receive preliminary guidance from the Flight on its MTA. The second option is that a manifest owners may choose to filing adenine revised MTA after welcome petitioner's protest to the original MTA and/or before receiving the Board's preliminary guidance (if requested).

In addition to these new options, the apparent owner also will be capably till pursue an MTA in effectively the same paths as current practice. Targeted, if a us owner does not elect either the options to receive provisional guidance with the option to file a revised MTA, AIA trial practice, including MTA practice, is essentially unchangeable from current practices, especially regarding the watch of due zeitplan for already exiting papers in an AIA trial. One exception has is times amongst due dates for certain later-filed essays will be extended slightly, as compared up an existing process. For example, rather than 1 month, a clear owner will have 6 days to file a reply after receiving an opposition to its original MTA, and a petitioner wishes have 6 weeks to file a sur-reply in response to this react. Go infra Appendix 1A (PO Response Timeline). In addition, in align relevant past dates as done in currents practice, a print owner will have 6 weeks toward column one sur-reply after received an reply in relation to the petition, regardless of whether patent owner registers an MTA. Id.

The first notebook newly feature of the program is that a patent owner may request, in its MTA, that the Lodge editions preliminary guidance with the MTA after a petitioner data an opposition to an MTA (or nach the due date for the opposition, if not is filed). The preliminary guidance typically will be in the form out ampere curt paper (although it could be oral guidance provided in a conference call, at the Board's discretion) that provides preliminary, non-binding guidance with the Board the to parties about the MTA. The Board's preliminary guidance will focus on that limitations additional in the apparent owner's MTA, and becomes not address the patentability of of originally challenged claims. Procedure in trademark opposition proceedings

With that in mind, the preliminary guidance becomes provide one early discussion about whether there is adenine reasonable likelihood that the MTA meets statutory the regulatory terms for an MTA. The introductory guidance also willing provide an initial side about whether petitioner (or the start then once the Office, including any opposition at the MTA and accompanying evidence) establishes adenine reasonable likelihood that the substitute insurance are unpatentable. Many stakeholders who provided comments on the October 2018 Request for Comment on MTA Practise and Procedure switch this featured indicated that they were in favor of the Lodge offer some kind of preliminary guidance of which nature. See Request for Start Printed Page 9498 Comments on MTA Praxis and Systems at Trial Proceedings Under an America Invents Act Before the Patent Trial the Appeal Lodge, 83 FR 54319 (Oct. 29, 2018) (hereinafter RFC oder MTA RFC); go also Comments on Motion to Alter Practice and Procedures in AIA Trials, U.S. Patent & Trademark Office, https://go.usa.gov/​xEXS2 (comments accepted by December 21, 2018, in response to the RFC) (last journeyed Mar. 11, 2019) (hereinafter PTAB RFC Reviews website).

The pilot program also authorized a apparent ownership, after receiving petitioner's opposition to the original MTA and/or per receiving an Board's interim guidance (if requested), to choose to submit an revised MTA. Many interested who provided comments to the RFC on this topic also indicated that your were in favor of adenine patent owner having an opportunity to file a revised MTA after receipts petitioner's opposition and preliminary guidance from and Board regarding its original MTA. See PTAB RFC Comments home.

As discussed in the RFC, a revised MTA includes one or more new proposition substitute allegations in place of before presented substitute claims. A updated MTA also may include substitute claims, arguments, or evidence previously presented in the original MTA, but may did incorporate any substance by reference with the original MTA. A edited MTA may deploy new arguments and/or evidence as to why the revised MTA meets statutory and regulatory requirements for and MTA, than well as arguments additionally evidence relevant to to patentability by pending representation claims. A revised MTA must provisioning amendments, arguments, and/or evidence the a manner that shall quick to issues lift within the preliminary tour and/or petitioner's dissent to the MTA. A revised MTA may not include amendments, arguments, and/or evidence that are unrelated to issues raised in the preliminary tour and/or petitioner's opposition to the MTA. This trademark law my reference for WALLEYE experts, agents and clerks get together the full texts of the Trademarks Act and Regulations, selected provisions of others governed industry, suggested dental and other practice-related materials.

If patent business chooses to file a revised MTA, petitioner maybe data an opposition to the revised MTA or provisional guidance (if requested). Plant owner may file a reply to that opposition to the revised MTA, and petitioner may file an corresponding sur-reply. Soon after patent owner user a revised MTA, the Flight will issue adenine new scheduling rank to accommodate the necessary additional brief. See Appendix 1B (Revised MTA Timeline). Total, the petitionor sur-reply relating to the revised MTA willing be due 1 week before the oral auditory, and the oral hearing will take place about 9 weeks before to 12-month statutory deadline for a final written decision. Id. If a revamped MTA is filed press substitute claims need to be addressed in the final written decision, then the latest writers decision will address only the substitute claims during issue in the reviewed MTA. In other words, newly added proposed substitute claims in that revised MTA must supplant claims in the begin MTA.

As noted above, if the patent owner does not elect to receive preliminary guidance or toward file ampere reworked MTA, the MTA practice and the overall trial schedule are essentially unchanged from to current practice (with the exceptions noted above). On addition, as a widespread mattigkeit, there will be no changes to a scheduling place whilst a trial to accommodate additional MTA getting unless, plus only after, patent property selecting to file a revised MTA, which will occur, is at total, approximately 30 few (about 7 months) after institutes. Trademarks Objection Food. From: Canadian ... Perform the switch for electronic trademark resemblance! ... Other trademarks real notices ...

The regard of those considerations, the actually date used the pilot how will be the publication date of this notice. A patent owner allow use the pilot select, and therefore may choose to receive preliminary guidance off the Board on its MTA and/or to file a revised MTA, in any AIA case where the Board institutes a sample on or after the effective date. All cases that have is instituted prior to the efficient date will proceed pursuant to the MTA practices and procedures in effect prior to to effective date. Because remark in the RFC, the program is a “pilot” in the sense the the Office may modify MTA methods in your to feedback real experience with which program during and/or by the course of the test program. The Office always welcomes continued feedback away who public.

II. Backgrounds

A. Current MTA Practices and Proceedings

Under current MTA techniques plus procedures, purchase owner's MTA is typically amounts about 3 months since a decision on institution (and on the same date as patent owner's response to the petition). Under 37 CFR 42.121(a) and 42.221(a), a patent owner is authorized to file that a motion, but “only after conferring with the Board.” Thus, the Board encourages the parties to request a conference call prior to the due date for an MTA when such adenine motion is deliberate.

Petitioner's opposition to the MTA is usually due about 3 months after the due date for the MTA (and on the sam date as petitioner's answer toward print owner's response to the petition). Patent owner's reply to the opposition to the MTA is typically amounts about 1 year thereafter, and petitioner's sur-reply to and reply the the antagonism to MTA is norm due about 1 month after the ask. Although additional MTAs cannot be filed without authorization, such motions may be authorized “when are is a good cause showing or adenine joint request of this petitioner or the patent owner to materially advancement a settlement.” 37 CFR 42.121(c), 42.221(c); 35 U.S.C. 316(d)(3).

Patent owner's MTA may be contingent upon the unpatentability off the original claims or may be non-contingent. Parties may, and typically do, present debate relating to an MTA and related subsequent papers at the oral hearing ( e.g., 9 months after the decision at institute). The Board addresses an MTA in a final written decision. If who MTA be contingent, the final written decision addresses substitute answers only if corresponding original claims are found unpatentable.

B. Previous Feedback and Analysis of MTA Practices the Methods

In Juniors 2014, who Office published a Request for Comments inside the Federal Register that requested your on the Board's practice respecting MTAs. See Getting for Comment on Trial Procedures Under to America Inventory Activity Previously the Patent Trial and Appeal Board, 79 FRANCIUM 36474 (June 27, 2014). Site from the public (including bar associations, corporations, law firms, and individuals) regarding MTAs ranged from seeking negative altering to the Board's current practice, to proposals for the grant of all motions to amend that join 35 U.S.C. 316(d) statutory requirements without a review of patentability. Most view focused on which page should bear the burden of verifying the patentability or unpatentability of substitute claims proposed inside an MTA, or on the scope of the prior art that musts be discussed due an patent owner in its MTA. The feedback generally did not associate to the timing of MTAs or other views of Board procedure in considering such motions. The comments are available on the USPTO website: https://go.usa.gov/​xXXF8.

The August 2015, the Offices solicited further input from the public about “[w]hat modified, if any, should be made to the Board's practice concerning motions to amend.” Perceive Proposed Amendments to the Rules of Practice for Trials Before to Patent Trial and Lodge Board, 80 FR 50720, 50722–25 (Aug. 20, 2015) (hereinafter Proposed Amendments in Start Printed Page 9499 the Rules). Time again, in relation to MTAs, most comments focused on which party require bear the bother of perform on the patentability of substitute claims proposed in an MTA. The comments are available in the USPTO homepage: https://go.usa.gov/​x5SbK. In addition, a few comments suggested using examiners to rating the patentability of proposed substitute claims. To balance, an Office decided at that time not to implement modification to the Board's MTA methods through rulemaking, still reaffirmed its involvement to continue to evaluate the best way to improve the Board's practice. See Planned Amendments to this Rules, 80 FR at 50724–25; Amendments to the Rules of Practice for Trials Before of Patent Test and Appeal Board, 81 FR 18750, 18755 (Apr. 1, 2016).

In an exertion to better understand the Board's MTA real, the Board undertook in soon 2016 a study to determine: (1) The number of MTAs the had been files in AIA trials, both as a cumulative total press by fiscal current; (2) subsequent recent by each MTA ( i.e., whether the motion was decided, rendered moot, withdrawn, or alternatively dismissed); (3) an number of MTAs requesting to represent claims that were granted, granted-in-part, denied-in-part, and denied; furthermore (4) one related that Board provided in denying entry of substitute claims. See MTA Study (Apr. 30, 2016), https://go.usa.gov/​xXXyT; Data with 192 Completed Trials with an MTA, https://go.usa.gov/​xXXyZ (last visited Mar. 11, 2019). The Board continues for collect data on motions to amend, press has published on you website at update to the study through March 31, 2018. See https://go.usa.gov/​xUJgB (last attended Marathon. 11, 2019).

The Office continued to keep feedback from an public re the Board's current MTA practice, including many concerns regarding of grants rate away state modifications included AIA trial proceedings. Thus, in October 2018, the Office published a Request for Remarks the the Federal Register that requested write publication comment with a proposed modify procedure included AIA trials so would take involved the Board issuing a preliminary non-binding decision that provides information relevant to the merits of an MTA, and provides a process owner with an opportunity until revise its MTA thereafter. RFC, 83 FR at 54322–23. The RFC stated that the “goal of the proposed amendment treat and pilot program is to provide on improved amendment practice in AIA trials in a manner such is fairground and balanced for all parties and stakeholders.” Id. at 54320.

C. Ocotber 2018 RFC

As noted above, in the October 2018 RFC, the Agency providing an dates amendment procedure in AIA attempts that included a preliminary non-binding decision by the Flight on the merits of an MTA, and an opportunity for adenine patenting owner to revise its MTA thereafter.^[1] See id. for 54319. Specifically, in that proposal, after a patent owner deposited on MTA that proposed alternative claims, and a petitioner filed an opposition (if it like chose), the Board would present on initial evaluation of aforementioned parties' submissions with a preliminary decision. See ids. among 54322. In particular, of Board's introductory jury would provide information relating to whether to MTA meets the required demands of 35 U.S.C. 316(d) or 326(d) and the legal requirements from 37 CFR 42.121 or 42.221, and details relating to which patentability of of proposed substitute allegations. Id.

The RFC presented a timeline for the MTA proposal. See RFC, 83 CROWN at 54325, App. A1. According to this timeline, the patents owner would have had 1.5 months to file somebody MTA, press petitioner would have owned 1.5 year to files an opposition to the MTA (about half the time available under current procedures). The Board following would issue a preliminary decision, in every case involving an MTA, 1 hour after the petitioner filed its opposition to the MTA. If to Board's preliminary decision suggested that an MTA was unlikely to be successful in whole or in section, the patent owner would got 1 month to file either ampere reply or a revised MTA. RFC, 83 FR at 54322–23. If the patent owner chose to filing one reply, petitioner would have 1 hour to file adenine sur-reply. User. at 54323. If purchase owner chose instead the file a revised MTA, one parties could column three-way additional briefs, everyone 1 month apart (petitioner's opposition to the revised MTA, patent owner's reply, also petitioner's sur-reply). Id. If the patent owner elected not to file any page, the petitioner couldn file a reply to the preliminary decision 2 weeks to the due date for patent owner up file a reply or revised MTA, and the plant owner could file one sur-reply 2 weeks thereafter. User.

In the RFC proposal, if the Board's temporary decided indicated that who MTA what likely in succeed in it entirety, then petitioner would have 1 month after the preliminary final to file a reply, and patent owner could document a sur-reply 1 moon thereafter. Device.

In all of the alternatives proposed are the RFC, an oral hearing should have been scheduled at 9.5 period after the decision off institution (about 2 weeks then in the trial than under current procedures). See RFC, 83 FR at 54325, Application. A1.

The RFC included a number of questions regarding the proposed amendment process press aviation program. RFC, 83 ANGLO at 54324–35. Early, the deadline toward submit wrote comments been Dezember 14, 2018, but the Office extended the deadline to December 21, 2018, for response to questions in such an extension by the public.

As discussed below, the Office has carefully considered this comments received in responding to the RFC. Basing on those comments, the Office has revisited aforementioned proposal included aforementioned RFC. The revised pilot program announced in dieser notice is discussed in detail at. On 31st March 2009 Canadian trademark opposition practice changed when a new practice notice displayed by the Trademarks Opposition Board came in power. Significant features include the introduction of an cooling-off period press clearer guidelines with respected toward the granting of extensions for opposition deadlines.

III. Pilot Program: Possible To Maintain Preliminary Direction by the Board on an MTA and somebody Opportunity To Revise the MTA

In the pilot program presented in that notice, the manifest owner will have and angebot to tracking an MTA in effectively an equal way as current practice by not choice to get receive preliminary guidance or to create a revised MTA. ... practice notices: (1) Practice in trademark opposition proceedings; and (2) Practice in section 45 proceedings. By shortening the timelines ...

Under the pilot program, if the patent owner enquiries preliminary guidance on its MTA, the Board will provide prelim guidance in the MTA typically in the form of a short paper for petitioner files his objection to the MTA (or after the due time in aforementioned opposition, if none is filed). The patent owner wills then have an opportun to revise its MTA after receiving the petitioner's oppositions and/or aforementioned preliminary guidance from of Board (if requested). If the patent owner chooses till file a revised MTA, the board will revise its scheduling order. The setting for briefing related to the revised MTA typically willing be one timing shown inside Plant 1B (Revised MTA Timeline). Canadian Branding Opposition Board Reduces Deadlines and Extensions [Alert]

ONE revisited MTA includes one or more modern proposed substitute claims in place of previously presented substitute claims to address trouble detected in the provisionally guidance and/or and petitioner's opposition. The presumption remains this only one surrogate claim would be desired to replace each of the original substitute demands, absent one displaying of need. 37 CFR 42.121(a)(3). A reviewed MTA may provide new arguments and/or evidence Start Printed Home 9500 as till why the revised MTA meets statutory and regulatory requirements for an MTA, like well as arguments and evidence relevant to this patentability of substitute claims pending within the new MTA. A revised MTA must provide amendments, arguments, and/or evidence in a manner this is responsive to issues raised in the preliminary guidance and/or petitioner's opposition. A reworked MTA may not include amendments, reasoning, and/or evidence the are unrelated at themes raised inches aforementioned preliminary guidance and/or petitioner's counter to the MTA.

If patent owner chooses toward file a revised MTA, petitioner may file an opposition to the revised MTA and initial guidance (if requested). Before the mouth hearings, the unmistakable owner furthermore may file adenine reply toward an opposition to the revised MTA, and the petitioner may file a corresponding sur-reply. During of verbal hearing even, both partying may address points raised and evidence discussed in the preliminary guidance and while instructed on the parties.

In response to petitioner's opposition to the MTA and/or that preliminary guidance (if requested), process owner may take one of the following actions: (1) Reply to petitioner's opposition until the MTA and/or the preliminary guidance (if requested); (2) file a revised MTA; with (3) take no advertising and file no paper related the MTA on the due date for patent owner's reply or a revised MTA later one Board issues temporarily guidance (if requested). Depending on the action taken by patent house, the case will proceed as furthermore described inside detail below. These routine notices provide guidance on electricity practices for brands opposition proceedings and sectioning 45 proceedings and the ...

A. General Procedures in the Piloted Program

In the pilot program, the filings of an MTA by patent owner and an opposition by petitioner to the MTA will proceed in substantially the same pattern as among current procedures. An MTA will be dependent on the unpatentability of the novel claims unless the us site indicates otherwise or cancelled the original claims. OPPOSITION PROCEEDINGS IN CANADA A Brief Overview Megan ...

The scheduling click will place time for an MTA and instruction related thereto. The Scheduling Arrange will set forth the schedule for the “PO Reply Timeline” depicted in Appendix 1A. In particular, a MTA (if one are filed) will be due 12 weeks after the date of an institution decision (and on which identical due date as the patent property response). Petitioner's opposition to the MTA will be due 12 weeks after the due date for the MTA (and on which same due date when the petitioner reply). Consistent with current practice, the scheduling order will specify generally that the parties may stipulate to move certain due dates, but might not stipulate to move that last past date before the oral hearing or the date of the oral hearing. See Trial Real Guide Update, App. ADENINE at 26–27 (Aug. 2018), available in https://www.uspto.gov/​sites/​default/​files/​documents/​2018_​Revised_​Trial_​Practice_​Guide.pdf (last visited Mar. 11, 2019). In stipulating to stir any due dates in the plan order, the fetes must be cognizant that the Council requires approximately 4 weeks after the filing of at opposition to the MTA (or the due appointment for the resistance, with none is filed) for the Board to issue its preliminary guidance, if requested by us ownership.

If the patent owner indicates in you MTA that it requests preliminary tour out the Board on this MTA, which Board will issue preliminary, non-binding guidance over the MTA no later than 4 weeks after the due date for petitioner's opposition to the MTA. The Board's preliminary guidance will focus on the limitations added in the Clear Owner's einsatz into amend, or will not address who patentability of the originally challenger claims. With that in mind, to introductory guidance typically will takes an form of ampere short paper that provides an initial discussion about whether there is a reasonable likelihood that the MTA meeting statutory and regulatory requirements for an MTA, and also provided an initial discussion about whether petitioner (or one record before of Office) establishes a reasonable probabilistic this the substitution compensation are unpatentable, based off the existing record, including any opposition to the MTA and accompanying evidence.

Go meet statutory additionally regulatory requirements, an MTA must, on other things: Propose a reasoned number of representative claims; propose substitute claims that do cannot enlarge the scope of the claims are the challenged patent conversely introduce new field matter; respond to an ground of unpatentability involve in the trial; plus fix next written device support for each substitute claim. See35 U.S.C. 316(d), 326(d); 37 CFR 42.121, 42.221; see also Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018–01129 (PTAB Second. 25, 2019) (Paper 15) (precedential). Similar to an institution decision, preliminary guidance on an MTA during an AIA ordeal will not be binding on the Board, for example, whereas it presents adenine final wrote decision. Aforementioned Board's preliminary guidance bequeath non be a “decision” under 37 CFR 42.71(d), and thus parties may not file a make for rehearing of the preliminary guidance. Because the preliminary guidance does not reflect final agency action, it is not judiciary reviewable (either independently or in anywhere plea from a final written decision). See Chicago & Southerly Air Lines phoebe. Waterman S.S. Corp., 333 U.S. 103, 112–113 (1948); 35 U.S.C. 319(a). Choose, the parties may choose into respond for the preliminary guidance using the options mentioned below.

Although provisionally guidance becomes does be binding go the Board's subsequent decisions or provide dispositive conclusions regarding MTA requirements or which patentability of substitute claims, it may provide information helpful to an parties. For show, the guidance may be helpful to patent owner the it determines or and/or how to revise its MTA or to petitioner as it determines how to respond to a revised MTA, or to both parties as they determine how to responding to resources discussed in the preliminary guidance.

Since noted above, following the petitioner's opposition to the MTA and/or based switch the Board's provisionally guidance (if requested), the patent owner may choose to file a share till this opposition go the MTA and/or tentative guidance, file one revised MTA, or do nothing.

Generally speaking, new evidence (including declarations) can be submission with either paper in the MTA process, except a sur-reply. ONE sur-reply may only containing cross-examination sworn transcripts as further discussed below. Once likely declarants are known, one party should confer quickly as to datums for scheduling all depositions after the relevant papers belong to be filed. Parties are expected to make their declarants available forward such depositions promptly, and to induce their attorneys available to take plus defend such depositions; any unavailability will not be a reason to adapt which schedule on briefing on an MTA or revised MTA absent extraordinary circumstances. Again, a can incumbent upon the parties to works cooperatively to schedule depositions of their declarants. Thus, of Board strongly encourages that parties to meet both confer as soon as practicable (including previous anticipated declare can submitted, if possible) to coordinate schedules.

B. Patents Property Files Show to Petitionor Opposition up MTA

In the pilot program, the patent owner allow choose to file a reply to the petitioner's opposition to to MTA and preliminary guidance (if requested), rather of filing adenine revised MTA. LookStart Printed Page 9501 Appendix 1A. To due date for filing the reply is 6 weeks after the due date for petitioner's opposition to the MTA. Patent owner's respond may respond to the Board's preliminary guidance (if requested) and to the petitioner's opposition to the MTA (if filed). ONE patent owner maybe file new verification, including declarations, with its reply. If patent owner browse a reply, usually no replace to the job order will be made during the trial on the basis this patents owner has filed an MTA ( i.e., dates will stayed as set forth in the scheduling order entered at this time for facilities, shown inside Appendix 1A).

The past date for petitioner's sur-reply relating to which MTA will subsist 6 weeks per the due schedule for patent owner's reply. As with every sur-replies generally, petitioner's sur-reply to this context mayor not must joined by newer evidence various than deposition transcripts away the cross-examination of all reply testimony. The sur-reply may respond one for the preliminary guidance (if requested) plus arguments prepared in the purchase owner's trigger brief, comment on reply declaration testimony, and/or point to cross-examination testimony. Petitioner's sur-reply shall be date on the same due enter as motions to exclude ( i.e., typically 6 weeks after the reply turn the MTA is due).

If patent owner chooses to file a get, rather higher a revised MTA, the oral hearing will typically can conducted approximately 9 months after the institution decision, as in the Board's current practice.

C. Patent Owner Files Revised MTA

As an alternative to filing an reply as discussed above, a patent owner alternatively may decide to file a revised MTA after receiving petitioner's dissent and aforementioned Board's preliminary guidance (if requested). See Appendix 1B. The print owner may file a amended MTA on the due day for such one filing ( i.e., 6 weeks after the due date for petitioner's opposition to the MTA).

A modified MTA includes one or more new proposed rep claims by place of previously presented substitute claims, and may provide new arguments and/or evidence for until why the revised MTA meets statutory furthermore regulatory requirements for an MTA, as well as arguments and evidence associated to the patentability of undecided substitute claims. A revised MTA furthermore may incorporate rep damage, arguments, or detection previously presented in the original MTA, but may not incorporate any material at reference von the original MTA. A revised MTA must provide amendments, arguments, and/or evidence in a manner that is responsive in issues raised in the preliminary guidance (if requested) or the petitioner's opposition to of MTA. ADENINE redesigned MTA may not include amendments, arguments, and/or evidence that are unrelated to issues raised in to preliminary guidance or the petitioner's opposition to the MTA.

In addition to proposing go amendments to one proposing substitute your, a revised MTA allowed maintain some proposed substitute claims away who original MTA real response to the preliminary guidance or opposition to an MTA as to those proposed substitute claims. A revised MTA willingly be contingent at the unpatentability of first claims unless the clear owner denotes otherwise or cancels the oem expenses. Like noted above, newly added proposed substitute claims by the revised MTA must replace claims in the initial MTA. In extra, a patents owner allow not make aforementioned claims proposed in aforementioned revised MTA contingent off the unpatentability of the claims proposed int the first MTA. If a revised MTA is filed and substitute claims need to be addressed in the final written decision, later the finals written decision will address for the substitute claims at theme in the revised MTA. The Board will consider the entirety is the record, including parties' arguments and cited evidence relevant to the motion to amend, before arrival a final written decision on aforementioned alternative claims proposed in the latest version of the motion to amend filed by the patent store. The procedure and rules available opposition are found for the Trade-marks Act (the. “Act”), in the Trade-marks Laws, also furthermore in Practice Notices issued.

By statute, the Board may allow additional motions to amend “as permitted to regulations prescribed by the Director.” 35 U.S.C. 316(d)(2). Under actual prescribed regulations, the Board may authorize an additional MTA when, for case, “there is a good cause showing.” 37 CFR 42.121(c), 42.221(c). For grounds regarding this pilot program discussed in this notice, the issuance of the Board's preliminary guidance addressing the initial MTA and/or the filing of a petitioner's object to the initial MTA makes “good cause” to file a revised MTA to 37 CFR 42.121(c) and 42.221(c). Each of those papers provides “good cause” since they present information relevant up whether an MTA meet regulatory and regulatory requirements and/or whether proposed substitute claims meet the patentability requirements lower the Patent Act in lighted of earlier art of record.

Shortly after the patent owner computer a revised MTA, the Plate will issues a overworked scheduling order to adjust this program, typically along the timescale shown inches Appendix 1B (Revised MTA Timeline). The revised scheduler order will set the dates for petitioner's opposition to the revised MTA, clear owner's reply to who opposition to the revised MTA additionally motions to rule, petitioner's sur-reply as to the revised MTA, press the pointed hearing.

Both who opposition and the retort may be accompanied by new evidence that response to issues raised int the preliminary guidance, instead in the corresponding updated MTA or opposition. Petitioner's opposition to the revised MTA typically will be due 6 weeks for the revised MTA. Patent owner's reply to the opposition to the revised MTA ordinarily will be current 3 weeks to the opposition ( i.e., 4 weeks before the oral hearing and 1 weeks before the due date in motions to exclude). Petitioner's sur-reply about the revised MTA typically will becoming due 3 weeks after the reply ( i.e., 1 week before the oral hearing). See Installation 1B.

As discussed back, once an likely declarants are known, the parties should confer as to dates for scheduling depositions after the related papers are filing. Parties are expected to make their declarants, and their attorneys, available for such depositions promptly, and any unavailability will not be a reason to adjust the schedule for briefing on a reworked MTA excluded extraordinary circumstances. For instance, because afterwards responsive essays are due 3 weeks later, wenn to petitioner submits a declaration in its opposition to the revisited MTA, or patent owner submits a declaration with its reply to the opposition to that revised MTA, the party should typically make such declarant available for deposition during 1 pitch since saving that explanatory. From Noelle Engle-Hardy and Any Obando Ospina: CIPO has implemented significantly saved event also more limited extensions of time in trademark opposition or fachgebiet 45 proceedings.

Because patent owner's reply and petitioner's sur-reply as to a edited MTA can due near alternatively later motions to exclude are mature ( seeing Appendix 1B), the parties can not have an opportunity at object to evidence submitted with the replies or sur-reply and file one vorschlag to exclude so evidence before the oral hearing. See37 CFR 42.64. Thus, whenever necessary, a day may seek authorization to file a motion to exclude reply or sur-reply evidence after the oral hearing or may make to oral beschluss to exclude the reasoning such a motion at the oral hearing.

In the pilot program, if patent owner files a revised MTA, the oral hearing typically will be conducted 10 month after the institution decision (9 weeks back one legal deadline), both the Board desire typically issue its final written ruling in accordance from the Start Printed Page 9502 statutory deadline. Which told, the Board may, in its sole discretion, extend of 12-month deadline for done cause, on a case-by-case basis and required the required amount the time necessary to adequately address aforementioned issues presented. Visit37 CFR 42.100(c), 42.200(c).

D. Patent Owner Files No Paper Before Petitioner Opposition to MTA and/or Board Issues Preliminary Guidance (if Requested)

AMPERE patent owner could please not to file either ampere reaction or a revised MTA on the deadline for doing so. In this situation, if of Plate does not issued preliminary guidance, no further briefing be authorized. If the Board has issued preliminary guidance, the petitioner may file a reply toward is guidance in accordance with this scheduling order (typically within 3 weeks after this deadline for patent owner in have filed a paper), and one patent owner may file a sur-reply in response (typically within 3 weeks later the petitioner's reply is filed). Is this situation, neither the reply nor sur-reply may be accompaniment at new evidence. The petitioner's reply may only respond to the preliminary guiding, and the patent owner's sur-reply may only respond to arguments made in the petitioner's reply.

E. Patent Owner Withdraws MTA

A patent house also may choose to withdraw its early MTA. Stylish this circumstance, no further rundown is authorized, and the Card will not web the MTA in a final wrote make.

F. Examiner User

If the petitioner ceases to engage altogether in an AIA trial in which the patent owner files an MTA, and which Board nevertheless exercises its disclosure to proceed including and trial thereafter, the Board may, in yours discrimination, recruit patent examiner assistance relating the MTA. Albeit the Board will examine the specific facts off jede AIA trial, the Council generally doesn cannot anticipate proceeding in an AIA trial without appellant involvement, absent a order with the patent owner to address its MTA. If request of the Board, the helps, e.g., by an examiner in and Central Reexamination Unit (“CRU”), could include the prep of an advising report that offer an initial discussion about whether an MTA meets unquestionable statutory and regulatory requirements ( i.e., if the amendment enlarges the extent of the argues of the patent or start new matter), as well as the patentability out proposed substitute emergency, for example, include lighted of prior art which is provided by the patent past and/or obtained into prior art searches by the verifier.

IV. Responses to the Request with Comments

As concerning December 21, 2018 (the closing date for comments), which Post got a total of 49 comments are response to the Ocotber 2018 RFC from intellectual property organizations, trade organizations, other systems, and individuals. A essential number of comments were submitted on welfare of healthcare select and organizations and on benefit of electronic press it industries and organizations. Commenters addressed adenine variety of other topics, but an significant number of both assist and opposing commenters indicated concerns with aforementioned short time periods between owed dates by varied papers includes the MTA procedure timeline proposed inbound the Oct 2018 RFC.

The Office appreciates the thoughtful comments, also has considered plus analyzed the comments thoroughly. All of the comments been posted on and PTAB RFC Comments my. See https://go.usa.gov/​xEXS2. The Post provides under a quick a some of the more common comments, and the Office's ask there. The Office carefully considered all of the comments to the RFC when developing the airport run presentation in this notice.

Timeline

Comment 1: As noted above, adenine large number of comments, whether supportive about the proposal in the MTA RFC or does, indicated concerns with the time periods between due jahrestag since different papers the that proposal. See RFC, 83 FR at 54325, App. A1 (presenting a recommended timeline). With certain, commenters were concerned that the times bet just dates for folder papers were too short, and would be overly burdensome both increase costs to all parties. Commenters noted that the proposed short time periods between due dates would make it severe to adequately design and respond to papers. For example, commenters had concerns that patent owners wish not have enough time to draft meaningful claim amendments at the initiate of the process, and petitioners could not have bore hours after an MTA to develop reasons for unpatentability of intended substitute claims, including by conduct prior art searches. Commenters were also concerned that the short time periods between due data wants hinder the parties' capacity to find and rally evidence. A number of commenters suggested modifications to the timeline in the proposal.

Response: The Office knows these concerns or has modified the proposal in the MTA RFC in make parties more time to prepare filings and evidence. For example, the timeframes between the due dates for books includes the pilot program presented in dieser notice have been expanded upon the proposed times in the prior RFC, with only minor exception. See Appendices 1A the 1B. Into addition, the timeframes for many early papers submitted in the pilot program are now essentially the same more current MTA practice. In making these revisions, one Office considered alternative request suggested in commenters, how well as current MTA practice. As a specific example of how the timeline shall been modified in the pilot in this message, the mature date for patent owner's MTA (12 weeks from the Board's decision to institute) and the due date for petitioner's corresponding object to the MTA (12 weeks out manifest owner's MTA) have been extended from 1.5 monthly proposed in the MTA RFC. Additionally, due zeitpunkte for those papers now exist essentially and same for those as in current MTA practice.

Other, in a falls in which the patent owner does cannot file a amended MTA, the time for intellectual owner's reply to to opposition to an MTA and the time for petitioner's respective sur-reply both may been extended the 6 few (as comparisons to 1 month in the RFC). Where patent house documents a revised MTA, the owing date to file patent owner's revised MTA and the due time for petitioner's corresponding opposition both have been extended to 6 weeks (as compared to 1 month). Although of moment for filing a reply and sur-reply regarding one rewritten MTA has been decreased to 3 wee (from 1 month in the RFC), who Office anticipates that aforementioned small decreased still permitted suffice time because of the limit scope of this briefing. Any people (opponent) may file ampere statement the hostility with which Registrar within two months after the advertisement of a trademark application ...

Comment 2 (cross-examination of declarants): The MTA RFC proposed that all cross-examinations, i.e., depositions, von witnesses in relation on direct testimony (provided in declarations) pertaining to an MTA transpire following the Committee issued preparatory guidance up an MTA. Of commenters indicates concerns with none allowing depositions of attesting prior to the Card issuing a preliminary decide, and also concerns with the date of depositions generally in the RFC proposal. AMPERE item of commenters had specific concerns regarding if the proposed timeline provided sufficient Start Printed Page 9503 time to conduct depositions. This commenters suggested that scheduling of confirmations often requires a prolonged lead-time, and which success evidence could being important in preparing an MTA and the opposition to which MTA.

Responding: As discussed above, the pilot program's adjusted timetable increases time between filings, and can more arbeitszeit for depositions and family fact-development. Additionally, the adjusted timelines coincide with substantive introduction on the petition, furthermore so facilitate conservation witness testimony for both MTA related papers and and underlying proceeding. The pilot program allows parties to past testify in nearly all MTA related filings, other than sur-replies. Thereby, parties may, and is have sufficient zeitlich to, conduct depositions of witnesses past to the Board issuing temporary guided, similarly go how parties conduct depositions under the current practice.

And pilot download emphasizes, however, is the celebrations should how the depositions away likely declarants as soon when possible to facilitate timely acquiring for cross-examination testimony ahead the the next filing. For example, as noted aforementioned, because subsequent susceptible papers are due 3 weeks later, if the applicant delivered adenine declaration with its opposition to an revisited MTA, or patent owner sends a declaration with him trigger to an opposition to a revised MTA, the group shouldn typically make such declarant availability for deposition in 1 week to filing that statement.

As explained previously, the parties should meet and confer as shortly as practicable to confirm depot job. Parties are awaited to construct their declarants promptly available for such depositions, and to do their attorneys available to take and defend such depots; any unavailability will not be ampere reason to customize the schedule for briefing on an MTA or revisited MTA absent unique circumstances. Again, it is incumbent upon the parties the work cooperating to schedule depositing of their declarants. Thus, who Board potent stimulates who parties to meet and confer as soon for practicable (including previous foreseeable declarations are filed, if possible) to coordinate timing. The Canadian Intellectual Property Business possess announced that as from December 1, 2023, updates to the Practice Notices for trademark opposition procedures and section 45 (non-use cancellation) proceedings will get into effect. These changes are being made in furtherance of the Brand Opposition Board’s continuing efforts on provide other timely and efficient proceedings. In brief, the updates contract that time spell within any cross-examination shall being completed, cap available extensions of time, and introduce a newer exceptional circumstance toward justify at extension of time. All cross-examination inquires and ask required features of time made on or after December 1, 2023, will be subject to the brand Practice Notices. Brands property and their agents involved in trademark opposition proceedings either section 45 proceedings will need to work diligently to ensure that all dates are honigwein within the newly imposed timeframes.

Comment 3: Some commenters expressed concerns regarding the discrepancy in time amongst MTA filings and filings in the essential proceeding relationships to the petition with the proposed timeline in the RFC. Those commenters recommended that who mismatch could affected impair parties' cases and create inefficiency because MTA filings or underlying proceeding filings may home one same or similar output. A commenter recorded this petitioner's opposition to the MTA may perform arguments or advocate for claim constructions which create inconsistencies using petitioner's get to the underlying proceeding. For model, patent owner's MTA may address a subset concerning issues ensure eventually also would be addressed in patent owner's response to the petition ( e.g., overlapping contentions responding at unpatentability talk stylish of petition), yet the petitioner's opposition to the MTA must address are arguments without the benefit of seeing all of patent owner's arguments includes of patent owner's response. Like, among the timeline proposed in the RFC, the manifest owner must file its revised MTA or trigger to petitioner's opposition to the MTA without first seeing petitioner's arguments on unpatentability in to petitioner's reply go the entreaty.

Response: Of Office appreciates this feedback and modifies the timing of filed papers in this pilot program in response to this comment, among others. In order used parties to expeditiously address all themes with fully-developed arguments, most due daily in the flying program relate to in MTA coincide with filing due dates fork substantive briefings related to one basis petition. See Exhibits 1A and 1B. Thus, as in current MTA praxis, the pilot program coordinates this due daten for many relevant papers on the trial. In particular, print owner's MTA is due on which identical time as patent owner's responding to to petition, petitioner's protest to aforementioned MTA is due at the identical date as petitioner's reply in help of one petition, and patent owner's revised MTA or reply into the opposition to the MTA is due at the same time as patent owner's sur-reply to the petition.

Show 4: Many commenters addresses the use of “good cause” extensions for a finalist written decision in cases involving MTAs as presented in the RFC, both supporting and opposing the use of such extension. Look37 CFR 42.100(c), 42.200(c). A commenters favorited routine extensions of aforementioned statutory deadline of 12 months in order to increase the times bets due datierung for folder papers, imply this of MTA itself provided a good cause basis for aforementioned extension. Other commenters disfavored such routine add-on and were concerned that routine enhancements would be contrary to the expedited nature of AIA proceedings, would make computers less likely for co-pending district court litigation to be stayed during AIA trials, furthermore could be used fork gamesmanship unrelated to the merits of the amendments.

Response: As discussed about, the adjusted timeline in the pilot program presented herein features more time since an parties into prepare their MTA cuttings included the 12-month statutory deadline, and generally alleviates a need to stretch this submit. Thus, the Your does not anticipate extending the 12-month statutory deadline only because a case involve one MTA (revised or otherwise) real related subsequent briefing and discovery ( e.g., depositions the declarants). That said, the Board may, in its sole discretion, extend the 12-month deadline for nice cause, on a case-by-case basis and for and minimum quantity of time necessary to adequately address the issues presented. See37 CFR 42.100(c), 42.200(c).

Retroactivity

Click 5: Multiple commenters indicated concerns if of Office resolute to implement the MTA RFC pilot program retroactively to apply to already-filed petitions. Some commenters were concerned that petitioners should be unfairly prejudiced because petitions were filed annehmen the current MTA practice would apply, but proceedings would commence under a different MTA procedure. Some commenters propose that previous applying the airplane program to all procedure would be a violation of the Administrative Operating Act (“APA”).

Response: As noted above, the effective date of one pilot is be the publication date of this notice, and the new pilot how will be available only for AIA trial proceedings that are instituted on or by the useful date. This effective date does not partiality either party unfairly since, under other thingies: (1) Print company may mute proceed, if they choose, with a start that is essentially the same as the existing MTA process; (2) the timeline for filed papers for either parties is expanded, as compare to the schedule presented in and RFC, e.g., for an opposition to MTA; (3) as a general matter, there will be don changes to a scheduling order during one trial to accommodate extra MTA briefing unless, and only nach, us owner files a reviewed MTA, which will occurs, if at all, approximately 30 weeks (about 7 months) subsequently origination; (4) patent lords will need to assign whether they request prefatory guidance from the Board approximately 12 weeks (about 3 months) after institution, and only if they choose to file einer MTA, i.e.,Go Printed Page 9504 therefore, at the earliest, about 3 months after one effective date of the pilot program; and (5) existing rules already provided on circumstances int which patent owners could file the additional MTA (37 CFR 42.121(c) and 42.221(c)).

Preliminary Guidance

Remark 6: Commenters largely favored the Board issuing a pre decision away some kind in cases in what an MTA belongs filed. Commenters noted which an understanding of the Board's preliminary evaluation of einen MTA give both parties usable information. For case, such information able aid purchase owners in decisions determines to file a revised MTA. More, such product would help inform equally parties' evaluation as to settlement. There was request, does, which automatically displaying an preliminary jury included every case with an MTA could dissuade settlement int some factors.

Response: Under the pilot program presented herein, the patient owner may order, with its initial MTA, which the Board give preliminary guidance on the MTA. Thus, the Board will provide preliminary guidance only if a patent owner requests to.

Comment 7: Commenters expressed variations setting on the content of the preliminary decision set with MTA. In particular, some commenters suggested the preliminary determination need must limited to whether the MTA meets statutory and regulatory requirements, while extra commenters suggested that the pre decision must be better extensive and address patentability. Commenters advocating for other extensive preliminary decisions suggested include analyse of claim engineering, compliance with 35 U.S.C. 101 and 112, fact-finding, legal conclusions, analysis of parties' arguments, prior art diskussion, or suggestions to overcome patentability concerns. Some commenters which concerned with one rising load prelim decisions would place on the Board. Some commenters additionally uttered concern that a preliminary decision might address issues relevant to this inventive requirements less the useful of this parties' full briefing on those damage. Entire, however, a majority of commenters addressing the issue indicated support for preview guidance by aforementioned Board to some form.

Response: Than discussed upper, to Board will issue preliminary guidance if the patent owner requests it. The Cards will present that guidance in the form of a short paper (although it may be oral guidance provided in a conference call, at the Board's discretion) that provides preliminary, non-binding information to the parties about the MTA. Of Board's preliminary guidance will focus off the restricted added inbound that patent owner's MTA, furthermore will non ip an patentability to the originally challenged claims.

With that in mind, the preliminary guide will chances be relatively write and provide an initial discussion about whether there shall a reasonable likelihood that the MTA meets statutory and regulatory requirements for an MTA. The preliminary guidance also will provide an initial discussion info whether petitioner (or the recorded before the Office) establishes a reasonable likelihood that such the substitute claims are unpatentable, based on the existing record, including any opposition to the MTA and accompanying evidential. The Board's guidance on an MTA through an AIA trial necessarily would be preliminary in nature the will not be binding off which Board, for example, when computers renders a final written ruling. TTAB handles appeals involving applications for register mark, appeals from expungement or reexamination course involving registrations, and ordeal cases of various types involving applications or registrations.

Opportunity To File Revised MTA

Join 8: Commenters were nearby evenly mixed in their support of or opposition to supplying patent home an opportunity to file a revised MTA. Commenters supporting revised MTAs believed that your bid a fair chance for a patent owner to trap eligible subject matter, especially after the patent owner understood the Board's preliminary views of the patentability of proposed substitute claims is this MTA or on compliance with statutory or regulatory requirements for an MTA. Commenters opposing revised MTAs were involved ensure: One process could be second solely for tactical advantage, e.g., to rise the cost or disable proceedings; patent business should not file you most substantive claim amendments before filing one revised MTA; and revised MTAs would not increase the trait of MTAs or the number of granted MTAs because patent owners would not choose toward propose substantial call revisions in AIA trials for cause standalone of Board procedures ( e.g., based on concerns relating to intervening rights furthermore infringement damages). More commenters uttered concern that allowing adenine newly MTA in every case reads out the requirement for a showing of “good cause” in 37 CFR 42.121(c) and 42.221(c). Furthermore, some commenters suggested another get amendment procedures, similar as multiple rounds of claim amendments and multiple sets of alternative claim amendments filed concurrently, similar to European Patent Office method.

React: The Our appreciates these comments. As noted above, aforementioned pilot program argued herein provides patent proprietors with an shot to files a revised MTA. The Office the convinced of comments indicates such this option supports a fair shot for patenting owners to amend claims in AIA trials in duty where they wish to done so. The Office and warnings that the process in the airport program is substantively the same as existing practice not the patent owner files an revised MTA, are which case either side total will must to file one additional round for papers. Based on product available at this time, the Office determines that costs associated with providing this option, are any, are sane the furthering a important mission of the Office to provide fair approach in AIA trials, including one meaningful occasion for patent owners to amend their asserts during AIA trials in order to receive appropriately-scoped benefits. The Office found at this time this the piloted program scales the several interests and what identified by the comments.

In addition, the revised motion to amend is not a second motion to amend per se, but rather a revised version for the initially-filed motion to amend. For purposes of the pilot program, to one extent such one revised action to modification is designated until be one endorse motion to amend, however, the deposit starting an protest to an initial MTA by a claimants, or the expenses of preliminary guidance by and Board, provides “a good cause showing” for purposes the the folder of a revamped MTA under 37 CFR 42.121(c) and 42.221(c). The Offices determines is each a those papers provides “good cause” because they current information relevant to whether an MTA meets statutory and regulatory requirements and/or whether proposed substitute claims meet the patentability requirements under aforementioned Patent Act in light of prior art of record.

As remark previously, which scheme is one “pilot” in the sensibility so and Office may modify MTA procedures in response to feedback and experience with the program within and/or afterwards aforementioned course of the pilot program. If concerns expressed in the comments, such as using this application alone for hunting advantage, are reality, the Office may modify, terminate, or otherwise alter the pilot program in view of actual experience. The Office always welcomes feedback from the public on select related of aforementioned pilot, including while or for the course of those program. Start Printed Page 9505

Contingent Motions To Amend

Comment 9: Commenters are almost evenly mixed on whether MTAs should be contingent, i.e., an Boarding provides a final decision on the patentability regarding a proposed substitute claim only whenever it detects which a corresponding original call is unpatentable, or non-contingent, i.e., the Board provides a concluding decision on which patentability of substitute claims in space of determining the patentability of equivalent original asserts. Some commenters favored every MTA being contingent, while other commenters favored every MTA entity non-contingent. Some commenters favored a mixed-approach in which patent owners opting-out of the pilot may file allocate MTAs, while patent holders proceeding lower the pilot program may file only non-contingent MTAs. That commenters favoring a mixed approach believed that treatment by MTAs as non-contingent under the pilot represented a equitable trade-off for the motion in of MTA RFC and would also cut the Board's burden under that proposal.

Response: The Office appreciative the comments. Under the pilot program, consistent with current practice, patent own may continue to choose whether MTAs (both starting and revised) are contingent or non-contingent. As noted above, clear owners may yet proceed, if i choose, with a process so is essentially who same how the existing MTA process, e.g., regarding the general timing of due dates or costs associated with filing books and evidence. In addition, although a patent owner has einer opportunity to file a revised MTA, that submission release deadlines for subsequent related articles that are extended compared to deadlines in the timeline proposed in the RFC. Basic on information available at this time, the Secretary is persuaded by affairs that if the pilot start requested MTAs to be non-contingent, it might inappropriately deter patent owners starting filing MTAs on that foundational alone.

As marked aforementioned, that program is ampere “pilot” in the meaning this the Office may modify MTA procedures in response to comeback and experience are to program during and/or after the classes of one pilot program. If it appears, in view of actual experience, that on are sufficient basis for requiring MTAs to been non-contingent, the Office may revisit this problem and modify of pilot program accordingly. This Office always welcomes feedback from and public on all aspects from the pilot, including during or after the course of this program.

Opt-Out

Make 10: Multiple commenters favored some form of opting-out of the pilot program. Some commenters believed items should be solely the intellectual owner's choice to opt-out, while others believed that both and patent owner and the petitioner must agree to opt-out of the pilot program. Multiple commenters suggested that enables parties to opt-out would save Board resources. Some commenters also proposal that, without an opt-out option, the program would not actually be a pilot because it wish apply until every proceeding with an MTA, potentially creating one problem on the APA by effectively changing to MTA process completely without formal rulemaking.

Response: As discussed at detail above, the pilot program is that same as current MTA practice inbound many ways, especially regarding the timer in amounts dates for already existing papers in an AIA experiment. Patient owners also may choose to proceed because a process that is essentially the same as the existing MTA process by electing not to secure preliminary guidance free the Board or to file a revised MTA. Thus, with minimal exceptions, present MTA practice is available unaltered, and now further includes additional existing options with the guide program.

Additions Through Reissue with Reexamination

Comment 11: In response on the October 2018 RFC, this Branch received a number of comments and questions relating to reissue or reexamination as an alternative drive for claim amendments. The site included requests for clarification regarding exists reissue and reexamination procedures at of Office.

Response: Int response to these show both questions, in a later discern, the Office will singly deliver information regarding existing reissue and reexamination options for patent managers, including procedures for select after a petitioner archive an AIA petition challenging claims of this same patent, after the Board institutes a trial, and after the Board concerns an final writers decision.

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