News & Analysis as of

Patents Motion to Amend USPTO Pilot Program

Jones Day

USPTO Finalizes Partial Permanence of MTA Pilot Program

Jones Day on

On October 18, 2024, the USPTO’s final rule regarding Motion to Amend (“MTA”) practice and procedures in trial proceedings under the America Invents Act became effective. The rule makes permanent several MTA pilot program...more

Erise IP

Eye on IPRs, October 2024: USPTO Issues Final PTAB Procedure Rules

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: USPTO Issues Final Rules on PTAB Procedure - The U.S. Patent and...more

Womble Bond Dickinson

USPTO Seeks to Cement PTAB Motion to Amend Pilot Program

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The United States Patent and Trademark Office (USPTO) recently issued a Notice of Proposed Rulemaking seeking to revise its rules on amendment practice under the America Invents Act (AIA). Specifically, the USPTO is proposing...more

Fish & Richardson

USPTO Proposes Rules Updating Motion to Amend Practice Before the PTAB

Fish & Richardson on

The United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking (NPRM) today proposing to update its rules governing motions to amend before the Patent Trial and Appeal Board (PTAB). ...more

WilmerHale

PTAB/USPTO Update - June 2023

WilmerHale on

On May 23, the USPTO announced a request for comments seeking public input on whether to make permanent or modify the PTAB’s Motion to Amend (MTA) Pilot Program. The USPTO is also seeking related input on the rules of...more

Rothwell, Figg, Ernst & Manbeck, P.C.

USPTO Extends Motion to Amend Pilot Program

On October 4, 2022, the United States Patent and Trademark Office (USPTO) announced that it would be extending the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal Board (PTAB) for a second time—now set to...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends: A Niche Within a Niche: The PTAB’s Evolving Motion to Amend Practice

On March 15, 2019, the United States Patent and Trademark Office (USPTO) introduced a new Motion to Amend (MTA) Pilot Program. The Pilot Program gave patent owners an option to (1) receive Preliminary Guidance on the merits...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Troutman Pepper Locke

Motions to Amend: PTO Pilot Program Extended - Patents: Post-Grant Podcast

Troutman Pepper Locke on

Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for the fifth installment of their podcast series on strategy, trends, and other happenings at the PTAB. Moderated by Troutman Pepper...more

BakerHostetler

Recent Trends of Pilot-Eligible MTAs and Complementary Post Grant Strategies

BakerHostetler on

The USPTO’s Motion to Amend (MTA) Pilot Program has been in effect for nearly two years. The Pilot Program applies to all AIA trials instituted on or after March 15, 2019. Broadly, the Pilot Program’s objective is to provide...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 PTAB Year in Review: Analysis & Trends: Dramatic Changes to Motion to Amend Practice

Motions to amend have historically been viewed as an exercise in futility. The Director of the United States Patent and Trademark Office (USPTO), Andrei Iancu, agrees, having publicly stated that “[s]ome have suggested that...more

Mintz - Intellectual Property Viewpoints

Favorable Trends For Patent Owners Post-Aqua Products

When former President Barack Obama signed the Leahy–Smith America Invents Act into law on Sept. 16, 2011, the patent system in the United States underwent one of its most sweeping and significant overhauls. The AIA replaced...more

Polsinelli

Overview of the USPTO’s Motion to Amend Pilot Program

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In light of the many recent changes surrounding Post Grant Proceedings, below is an overview of the most recent changes and their potential impact to your business....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - March 2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

USPTO Announces Sweeping Changes to Motion to Amend Procedures in AIA Trials via Pilot Program

On March 15, 2019, the United States Patent and Trademark Office (USPTO) launched a pilot program that implements significant changes to motion to amend practice in AIA trials. The Office states that its goal in proposing...more

Latham & Watkins LLP

PTAB Update: Patent Office Issues Final Pilot Program for Motions to Amend

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Patent owners seeking amendments in PTAB proceedings will have two new options: asking for preliminary feedback, and revising their motions to amend. Key Points: ..The Final Pilot Program adds options to the amendment...more

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