Motion to Amend Patent Practice: New USPTO Pilot Program, Updates to Amendment Precedent

Recording of a 90-minute premium CLE webinar with Q&A


Conducted on Thursday, May 30, 2019

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Program Materials

This CLE webinar will guide patent counsel on at least the new USPTO pilot program for motions to amend and the PTAB's recent precedential decisions providing guidance on the statutory and regulatory requirements for a motion to amend. The panel will discuss what practitioners--whether representing petitioners or patent owners defending challenged claims--should consider relating to motions to amend.

Description

The USPTO published notice of its pilot program for motion to amend practice and procedures in post-grant proceedings. The pilot program provides patent owners with two new options in all AIA trials instituted on or after Mar. 15, 2019. The notice also revises the motion to amend timeline.

The pilot program sets forth details for motion to amend procedures that will be in effect for the duration of the pilot program. Under the pilot program, a patent owner may receive preliminary guidance from the Board on its motion to amend. A patent owner may file a revised motion to amend after receiving the petitioner's opposition to the original motion to amend and/or after receiving the PTAB preliminary guidance.

The PTAB also provides guidance and information as to motion to amend requirements in its precedential opinions, Lectrosonics Inc. v. Zaxcom Inc. (P.T.A.B. Feb. 25, 2019) and Amazon.com Inc. v. Uniloc Luxembourg S.A. (P.T.A.B. Jan. 18, 2019). Lectrosonics addresses the burden of persuasion the Office applies, the scope of proposed substitute claims, and provision of a claim listing in the motion to amend, among other requirements. Amazon holds that 35 U.S.C. Section 311(b) does not preclude grounds of unpatentability not previously raised in the IPR, including subject matter eligibility, as to proposed substitute claims in the context of a motion to amend.

Listen as our authoritative panel of patent attorneys examines motions to amend, the new pilot program and the Amazon and Lectrosonics decisions. The panel will discuss what Lectrosonics and the pilot program mean for motions to amend practice. The panel will offer suggestions for tactics, whether representing patent owners as petitioners or patent owners defending challenged claims related to motions to amend.

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Outline

  1. Pilot program for motions to amend
    1. New options
    2. What stays the same
  2. Guidance re: statutory and regulatory requirements for MTA
    1. Lectrosonics Inc. v. Zaxcom Inc.
    2. Amazon.com Inc. v. Uniloc Luxembourg S.A.
  3. Recent developments' impact on motions to amend practice
  4. Strategies for motions to amend
    1. Patent owners as petitioners
    2. Patent owners defending claims

Benefits

The panel will review these and other key issues:

  • What changes will the new USPTO pilot program bring to motions to amend practice?
  • How could the Lectrosonics and Amazon precedential decisions affect counsel's patent practice and patent owners' ability to get amended claims granted?
  • What practical considerations should counsel keep in mind related to motions to amend?

Faculty

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

McCorquindale, J. Derek
J. Derek McCorquindale

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. McCorquindale focuses his practice on patent and other intellectual property litigation, at both the trial and...  |  Read More

McCurdy, Barbara
Barbara Clarke McCurdy

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. McCurdy has more than 25 years of experience creating, enforcing, and defending patent rights, with a particular...  |  Read More

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