By John Marlott

The United States Patent and Trademark Office (USPTO) has again extended the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal Board (PTAB).

The MTA Pilot Program provides a patent owner who files a motion to amend in a trial proceeding under the America Invents Act (AIA) with two options not previously available: (1) a patent owner may choose to receive preliminary guidance from the PTAB on its MTA; and (2) a patent owner may choose to file a revised MTA after receiving a petitioner’s opposition to the original MTA and/or the PTAB’s preliminary guidance (if requested).  If a patent owner does not elect either option, then AIA trial practice, including MTA practice, is essentially unchanged from the practice prior to the implementation of the MTA Pilot Program.

The USPTO is tracking data related to MTAs. The most recent information and statistics regarding MTAs are available on the USPTO’s website.

The USPTO launched the MTA Program in March 2019 and previously extended the program in September 2021.  With the current extension, the MTA Program will now run until at least September 16, 2024.

According to the notice published on October 4, 2022, the USPTO will be considering whether to make the MTA Program permanent:

Now that stakeholders have had experience with the MTA Pilot Program, as well as access to the results of the Motion to Amend Study, the USPTO plans to issue a Request for Comments regarding the MTA Pilot Program to gather stakeholder feedback and suggestions on the program and on amendment practice generally and to determine whether to make the program permanent through notice-and-comment rulemaking. The USPTO is extending the MTA Pilot Program for a second time, through September 16, 2024, while it gathers public input.

We will continue to monitor developments regarding the MTA program.

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John Marlott brings more than 30 years of intellectual property law experience to his role as lead counsel in IP disputes for Jones Day clients. He focuses on high-stakes district court and ITC patent litigation, post-grant patent proceedings before the PTAB, and appeals to the U.S. Court of Appeals for the Federal Circuit.