The USPTO is requesting comments from the public on proposed procedures regarding motions to amend in IPR, CBM, and PGR proceedings. In short, the proposed amendment process would involve the Board providing a “non-binding” preliminary decision on a motion to amend after the petitioner has an opportunity to respond to the motion. The patent owner and the petitioner will then have an opportunity to respond to the Board’s preliminary decision. The patent owner will also have an opportunity to revise its motion to amend after receiving the preliminary decision. Thereafter, if the petitioner successfully shows the original claims as being invalid, the Board will determine whether the proposed substitute claims are patentable.
The USPTO’s request for comments also provides the following timelines summarizing the proposed process:
Proposed Timeline for New Motion to Amend Process
Overlay of Proposed New Motion to Amend Process Timeline and AIA Trial Timeline