Insights from the First Year of the USPTO’s New Motion to Amend Pilot Program

Andrei Iancu, Director of the American Intellectual Property Law Association’s 2018 annual meeting, has repeatedly stated his desire to give patent owners greater ability to amend claims during AIA trial proceedings. In March 2019, the USPTO took a step in that direction with its pilot program for motion to amend practice. An eligible patent owner who chooses to take advantage of the pilot program can receive valuable preliminary guidance from the Board on its motion to amend, and, if desired, can file a revised motion to amend based on that feedback. Eighteen months after the pilot program’s launch, only a handful of eligible trials have reached final disposition at the Board. In this article, we take a close look at each of these cases to analyze whether and how the Board’s preliminary guidance has impacted their outcome—and provide strategic practice tips for both petitioners and patent owners. Read the full version of "Insights from the First Year of the USPTO’s New Motion to Amend Pilot Program" here.