By John Wright and John Marlott

The USPTO continues to seek public feedback on PTAB procedures and potential rule changes.  In addition to soliciting comments on the many proposed rule changes announced on April 21, 2023, the USPTO also recently issued a request for comments seeking public input on the Motion to Amend (MTA) Pilot Program.  As discussed in a previous post, the MTA Pilot Program provides a patent owner who files a motion to amend in a trial proceeding under the AIA the option to receive preliminary guidance from the PTAB, and allows the patent owner to file a revised MTA after receiving a petitioner’s opposition to the original MTA or the PTAB’s preliminary guidance.

In its announcement, the USPTO notes that it is specifically seeking input on “on whether the MTA Pilot Program procedures should be made permanent, and if so, whether any modifications would be beneficial” as well as “input on the practical effects of the MTA burden-allocation rules.”  Finally, the USPTO is also soliciting input on whether the PTAB should have “broader authority to raise sua sponte grounds” during the MTA process.

Currently, the MTA Program is tentatively set to run until at least September 16, 2024.  The request for comment period will run through July 21, 2023 and comments may be submitted through the Federal eRulemaking Portal.

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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.