The notice in the Federal Register <\/em>provides further detail, but the following passages and figure from the notice are particularly helpful in understanding the contours of the new program:<\/p>\n [A] revised MTA includes one or more new proposed substitute claims in place of previously presented substitute claims. A revised MTA also may include substitute claims, arguments, or evidence previously presented in the original MTA, but may not incorporate any material by reference from the original MTA. A revised MTA may provide new arguments and\/or evidence as to why the revised MTA meets statutory and regulatory requirements for an MTA, as well as arguments and evidence relevant to the patentability of pending substitute claims. A revised MTA must provide amendments, arguments, and\/or evidence in a manner that is responsive to issues raised in the preliminary guidance and\/or petitioner’s opposition to the MTA. A revised MTA may not include amendments, arguments, and\/or evidence that are unrelated to issues raised in the preliminary guidance and\/or petitioner’s opposition to the MTA.<\/p><\/blockquote>\n 84 Fed. Reg. at 9,498.<\/em><\/p>\n [N]ewly added proposed substitute claims in the revised MTA must replace claims in the initial MTA. In addition, a patent owner may not make the claims proposed in the revised MTA contingent on the unpatentability of the claims proposed in the original MTA. If a revised MTA is filed and substitute claims need to be addressed in the final written decision, then the final written decision will address only the substitute claims at issue in the revised MTA.<\/p><\/blockquote>\n Id. <\/em>at 9,501.<\/p>\n The typical schedule will be as follows, with the black and grey ovals indicating the main events under the new procedures:<\/p>\n Id.<\/em> at 9,507.<\/p>\n [P]etitioner may file an opposition to the revised MTA and preliminary guidance (if requested). Patent owner may file a reply to the opposition to the revised MTA, and petitioner may file a corresponding sur-reply. Soon after patent owner files a revised MTA, the Board will issue a new scheduling order to accommodate the necessary additional briefing. See<\/em> Appendix 1B (Revised MTA Timeline). Generally, the petitioner sur-reply relating to the revised MTA will be due 1 week before the oral hearing, and the oral hearing will take place about 9 weeks before the 12-month statutory deadline for a final written decision. Id.<\/em><\/p><\/blockquote>\n Id. <\/em>at 9,498.<\/p>\n Impact Practice Considerations<\/u><\/p>\n Parties should form PTAB strategies with their counsel as appropriate for their unique circumstances.\u00a0 In doing so, they may wish to consider the following points:<\/p>\n [1]<\/a> Notice Regarding a New Pilot Program Concerning Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 84 Fed. Reg. 9497 (March 15, 2019) (available at<\/em> https:\/\/www.govinfo.gov\/content\/pkg\/FR-2019-03-15\/pdf\/2019-04897.pdf<\/a>).<\/p>\n","protected":false},"excerpt":{"rendered":" Overview As recently noticed in the Federal Register, the Patent Trial and Appeal Board\u2019s (PTAB or Board) new motion to amend (MTA) procedures are now in effect as\u00a0a one-year pilot program. \u00a0[1] \u00a0In sum, the patent owner (PO) now has the option to ask for preliminary guidance from the Board about its substitute claims in … <\/p>\n![\"\"](\"http:\/\/blogs.duanemorris.com\/ptab\/wp-content\/uploads\/sites\/30\/2019\/03\/Revised-MTA.png\")
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\n<\/u>So, which PTAB proceedings are impacted and how?<\/p>\n\n
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