The USPTO has published a Request for Comments (RFC) on a proposed procedure for motions to amend filed in AIA trials before the PTAB. The proposal includes providing the parties with the Board’s initial assessment of the proposed amendment early in the process; providing meaningful opportunity to revise and oppose proposed amendments; and ensuring the amendment process concludes within the 12-month statutory timeline.

The proposal is based on six years of experience conducting AIA trials during which more than 350 motions to amend were filed. Specifically, the USPTO seeks public input on a proposed amendment process that would involve a preliminary non-binding decision by the PTAB regarding the merits of a motion to amend. Such information may include whether the motion, in view of a petitioner’s preliminary opposition, is reasonably likely to meet statutory and regulatory requirements and whether the proposed substitute claims are reasonably likely to meet patentability requirements.