Federal Register / Vol. 89, No. 43 / Monday, March 4, 2024 / Proposed Rules 15531 

by the proposed priority and 

requirements would be limited to 

paperwork burden related to preparing 

an application and that the benefits of 

the proposed priority and requirements 

would outweigh any costs incurred by 

the applicants. 

Participation in the Technical 

Assistance on State Data Collection 

program is voluntary. For this reason, 

the proposed priority and requirements 

would impose no burden on small 

entities unless they applied for funding 

under the program. We expect that in 

determining whether to apply for 

Technical Assistance on State Data 

Collection program funds, an eligible 

entity would evaluate the requirements 

of preparing an application and any 

associated costs and weigh them against 

the benefits likely to be achieved by 

receiving a Technical Assistance on 

State Data Collection program grant. An 

eligible entity probably would apply 

only if it determines that the likely 

benefits exceed the costs of preparing an 

application. 

We believe that the proposed priority 

and requirements would not impose any 

additional burden on a small entity 

applying for a grant than the entity 

would face in the absence of the 

proposed action. That is, the length of 

the applications those entities would 

submit in the absence of the proposed 

regulatory action and the time needed to 

prepare an application would likely be 

the same. 

This proposed regulatory action 

would not have a significant economic 

impact on a small entity once it receives 

a grant because it would be able to meet 

the costs of compliance using the funds 

provided under this program. We invite 

comments from eligible small entities as 

to whether they believe this proposed 

regulatory action would have a 

significant economic impact on them 

and, if so, request evidence to support 

that belief. 

Paperwork Reduction Act of 1995 

The proposed priority and 

requirements contain information 

collection requirements that are 

approved by OMB under OMB control 

number 1820–0028. The proposed 

priority and requirements do not affect 

the currently approved data collection. 

Accessible Format: On request to the 

program contact person listed under FOR

FURTHER INFORMATION CONTACT, 

individuals with disabilities can obtain 

this document and a copy of the 

application package in an accessible 

format. The Department will provide the 

requestor with an accessible format that 

may include Rich Text Format (RTF) or 

text format (txt), a thumb drive, an MP3 

file, braille, large print, audiotape, or 

compact disc, or other accessible format. 

Electronic Access to This Document: 

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the document published in the Federal 

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view this document, as well as all other 

documents of this Department 

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You may also access documents of the 

Department published in the Federal 

Register by using the article search 

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Specifically, through the advanced 

search feature at this site, you can limit 

your search to documents published by 

the Department. 

Glenna Wright-Gallo, 

Assistant Secretary for Special Education and 

Rehabilitative Services. 

[FR Doc. 2024–04437 Filed 3–1–24; 8:45 am] 

BILLING CODE 4000–01–P 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Part 42 

[Docket No. PTO–P–2020–0060] 

RIN 0651–AD50 

Motion To Amend Practice and 

Procedures in Trial Proceedings Under 

the America Invents Act Before the 

Patent Trial and Appeal Board 

AGENCY: Patent Trial and Appeal Board, 

United States Patent and Trademark 

Office, Department of Commerce. 

ACTION: Notice of proposed rulemaking. 

SUMMARY: The United States Patent and 

Trademark Office (Office or USPTO) 

proposes to update its rules governing 

amendment practice in trial proceedings 

under the Leahy-Smith America Invents 

Act (AIA) to make permanent certain 

provisions of the Office’s motion to 

amend pilot program (MTA pilot 

program) and to revise the rules that 

allocate burdens of persuasion in 

connection with motions to amend 

(MTAs). The Office proposes to revise 

its rules of practice to provide for 

issuance of preliminary guidance in 

response to an MTA and to provide a 

patent owner with the option for filing 

one additional revised MTA. Further, 

the Office proposes to revise the rules to 

clarify that a preponderance of evidence 

standard applies to any new ground of 

unpatentability raised by the Board and 

to clarify that when exercising the 

discretion to grant or deny an MTA or 

to raise a new ground of unpatentability, 

the Board may consider all evidence of 

record in the proceeding, including 

evidence identified through a prior art 

search conducted by the Office at the 

Board’s request and added to the record. 

These rules better ensure the Office’s 

role of issuing robust and reliable 

patents, and the predictability and 

certainty of post-grant trial proceedings 

before the Board. These changes would 

apply to the existing consolidated set of 

rules relating to the Office trial practice 

for inter partes review (IPR), post-grant 

review (PGR), and derivation 

proceedings that implemented 

provisions of the AIA providing for 

trials before the Office. 

DATES: To ensure consideration, 

commenters must submit written 

comments on or before May 3, 2024. 

ADDRESSES: For reasons of government 

efficiency, comments must be submitted 

through the Federal eRulemaking Portal 

at https://www.regulations.gov. To 

submit comments via the portal, enter 

docket number PTO–P–2020–0060 on 

the home page and select ‘‘search.’’ The 

site will provide a search results page 

listing all documents associated with 

this docket. Find a reference to this 

proposed rulemaking and select the 

‘‘Comment’’ icon, complete the required 

fields, and enter or attach your 

comments. Attachments to electronic 

comments will be accepted in ADOBE®

portable document format or 

MICROSOFT WORD® format. Because 

comments will be made available for 

public inspection, information that the 

submitter does not desire to make 

public, such as an address or phone 

number, should not be included in the 

comments. 

Visit the Federal eRulemaking Portal 

(https://www.regulations.gov) for 

additional instructions on providing 

comments via the portal. If the 

electronic submission of comments is 

not feasible due to lack of access to a 

computer and/or the internet, please 

contact the USPTO using the contact 

information below for special 

instructions regarding how to submit 

comments by mail or by hand delivery, 

based upon the public’s ability to obtain 

access to USPTO facilities at the time. 


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FOR FURTHER INFORMATION CONTACT: 

Miriam L. Quinn, Acting Senior Lead 

Administrative Patent Judge; or Melissa 

Haapala, Vice Chief Administrative 

Patent Judge, at 571–272–9797, Miriam.

Quinn@uspto.gov or Melissa.Haapala@

uspto.gov, respectively. 

SUPPLEMENTARY INFORMATION: 

Background 

Development of the Proposed Rule 

On September 16, 2011, the AIA was 

enacted into law (Pub. L. 112–29, 125 

Stat. 284 (2011)), and in 2012, the Office 

implemented rules to govern Office trial 

practice for AIA trials, including IPR, 

PGR, covered business method (CBM), 

and derivation proceedings pursuant to 

35 U.S.C. 135, 316, and 326 and AIA 

18(d)(2). See 37 CFR part 42; Rules of 

Practice for Trials before the Patent Trial 

and Appeal Board and Judicial Review 

of Patent Trial and Appeal Board 

Decisions, 77 FR 48612 (August. 14, 

2012); Changes to Implement Inter 

Partes Review Proceedings, Post-Grant 

Review Proceedings, and Transitional 

Program for Covered Business Method 

Patents, 77 FR 48680 (August 14, 2012); 

Transitional Program for Covered 

Business Method Patents—Definitions 

of Covered Business Method Patent and 

Technological Invention, 77 FR 48734 

(August. 14, 2012). Additionally, the 

Office published a Patent Trial Practice 

Guide (Practice Guide) for the rules to 

advise the public on the general 

framework of the regulations, including 

the structure and times for taking action 

in each of the new proceedings. See 84 

FR 64280 (November 21, 2019); https:// 

www.uspto.gov/TrialPracticeGuide

Consolidated. The Practice Guide 

provides a helpful overview of the 

Patent Trial and Appeal Board (PTAB or 

Board) process. See, e.g., Practice Guide 

at 5–8 (AIA trial process), 66–72 

(motions to amend). 

In 2018, the Office published a 

Request for Comments (RFC) on a 

proposed procedure for motions to 

amend filed in AIA proceedings before 

the PTAB. See RFC on MTA Practice 

and Procedures in Trial Proceedings 

under the America Invents Act before 

the Patent Trial and Appeal Board, 83 

FR 54319 (October 29, 2018) (seeking 

public comments on a previously 

proposed procedure for MTAs, the 

Board’s MTA practice generally, and the 

allocation of burdens of persuasion after 

Aqua Products, Inc. v. Matal, 872 F.3d 

1290 (Fed. Cir. 2017) (en banc) (Aqua 

Products)) (2018 RFC). After considering 

the comments received in response, the 

Office implemented the MTA pilot 

program. See Notice Regarding a New 

Pilot Program Concerning MTA Practice 

and Procedures in Trial Proceedings 

Under the America Invents Act Before 

the Patent Trial and Appeal Board, 84 

FR 9497 (March 15, 2019) (MTA pilot 

program notice). The MTA pilot 

program was extended through 

September 16, 2024. Extension of the 

Patent Trial and Appeal Board Motion 

to Amend Pilot Program, 87 FR 60134 

(October 4, 2022). 

Preliminary Guidance and Revised 

Motions To Amend Under the MTA 

Pilot Program 

The MTA pilot program provides a 

patent owner with two independent 

options when proposing substitute 

claims for challenged patent claims 

during an AIA trial proceeding. Under 

the first option in the MTA pilot 

program, if requested by a patent owner 

in its original MTA, the Board will issue 

preliminary, non-binding guidance. 

Under the second option, a patent 

owner may file, without needing Board 

authorization, a revised MTA as 

discussed further below. 

The Board’s preliminary guidance 

typically will come in the form of a 

short paper issued after a petitioner files 

its opposition to the MTA (or after the 

due date for a petitioner’s opposition, if 

none is filed). The preliminary guidance 

provides, at a minimum, an initial 

discussion about whether there is a 

reasonable likelihood that the original 

MTA meets statutory and regulatory 

requirements for an MTA and whether 

the petitioner (or the record then before 

the Office, including any opposition to 

the MTA and accompanying evidence) 

establishes a reasonable likelihood that 

the substitute claims are unpatentable. 

See MTA pilot program notice, 84 FR 

9500. 

Further, a patent owner may choose to 

file a revised MTA after receiving a 

petitioner’s opposition to the original 

MTA or after receiving the Board’s 

preliminary guidance (if requested). A 

revised MTA replaces the original MTA. 

If a patent owner chooses to file a 

revised MTA, the revised MTA must 

include one or more new proposed 

substitute claims in place of previously 

presented substitute claims, where each 

new proposed substitute claim presents 

a new claim amendment. The new claim 

amendments, as well as arguments and 

evidence, must be responsive to issues 

raised in the preliminary guidance (if 

requested) or in petitioner’s opposition. 

Instead of filing a revised MTA, a patent 

owner may choose to file a reply to a 

petitioner’s opposition to the MTA and/ 

or the preliminary guidance (if 

requested). If preliminary guidance was 

issued at a patent owner’s request, the 

patent owner may choose to take no 

action and wait for the petitioner’s reply 

to the preliminary guidance and then 

file a sur-reply. 

The MTA pilot program notice set 

forth typical timelines and due dates for 

the filing or issuance of MTA-related 

papers, depending on whether a patent 

owner takes advantage of neither, one, 

or both options under the program. See 

MTA pilot program notice, 84 FR 9506– 

9507, Appendices 1A (Patent Owner 

Reply Timeline) and 1B (Revised MTA 

Timeline). Where a revised MTA is 

filed, the Office issues a scheduling 

order that adjusts the deadline for oral 

hearing to accommodate the additional 

briefing on the MTA. 

As described in the MTA pilot 

program notice and implemented by the 

Board, the preliminary guidance 

provides the Board’s initial, preliminary 

views on the original MTA. With that in 

mind, the preliminary guidance will 

provide an initial discussion about 

whether the parties have shown a 

reasonable likelihood of meeting their 

respective burdens. See Rules of 

Practice To Allocate the Burden of 

Persuasion on Motions To Amend in 

Trial Proceedings Before the Patent Trial 

and Appeal Board. 85 FR 82923 

(December 21, 2020); 37 CFR 42.121(d), 

42.221(d). In particular, the preliminary 

guidance will address whether there is 

a reasonable likelihood that the patent 

owner has shown that the MTA meets 

the statutory and regulatory 

requirements for an MTA. See 37 CFR 

42.121(d)(1), 42.221(d)(1); see also 35 

U.S.C. 316(d), 326(d); Lectrosonics, Inc. 

v. Zaxcom, Inc., IPR2018–01129, 2020 

WL 407145, at *1 (precedential). The 

preliminary guidance will also provide 

an initial discussion about whether the 

petitioner (or the record then before the 

Office, including any opposition to the 

MTA and accompanying evidence) has 

established a reasonable likelihood that 

the proposed substitute claims are 

unpatentable. See 37 CFR 42.121(d)(2), 

42.221(d)(2). The preliminary guidance 

may also address new grounds of 

unpatentability discretionarily raised by 

the Board, together with citations to the 

evidence of record supporting those 

new grounds. See 37 CFR 42.121(d)(3) 

and (4), 42.221(d)(3) and (4). In general, 

the Board’s preliminary guidance will 

address the proposed substitute claims, 

in light of the amendments presented in 

those claims, in a patent owner’s 

original MTA and will not address the 

patentability of the originally 

challenged claims. 

Similar to an institution decision, 

preliminary guidance on an MTA 

during an AIA trial will not be binding 

on the Board. See Medytox, Inc. v. 

Galderma S.A., 71 F.4th 990, 1000 (Fed. 

Cir. 2023) (holding that the Board’s 

decision to change its claim 

construction between its Preliminary 

Guidance and the final written decision 

(FWD) was not arbitrary and capricious 


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and did not violate the Administrative 

Procedure Act). The Board’s preliminary 

guidance is not a ‘‘decision’’ under 37 

CFR 42.71(d), and thus parties may not 

file a request for rehearing or Director 

Review of the preliminary guidance. 

The parties will have the opportunity to 

respond to the preliminary guidance. 

For example, a patent owner may file a 

reply to a petitioner’s opposition to the 

MTA or a revised MTA. The patent 

owner’s reply may respond to the 

Board’s preliminary guidance and/or to 

the petitioner’s opposition to the MTA. 

If an opposition is not filed, but a 

preliminary guidance was requested, a 

patent owner’s reply may respond only 

to the preliminary guidance. New 

evidence (including declarations) may 

be submitted with every paper in the 

MTA process, except with a sur-reply or 

in the special circumstance discussed 

below. Thus, a patent owner may file 

new evidence, including declarations, 

with its revised MTA or reply. See 84 

FR 9500 (stating further that when filing 

new declarations, parties are expected 

to make their declarants available for 

depositions promptly and to make their 

attorneys available to take and defend 

such depositions; any unavailability 

will not be a reason to adjust the 

schedule for briefing on an MTA or 

revised MTA absent extraordinary 

circumstances). The sur-reply also may 

respond to the preliminary guidance 

and is limited to responding to 

arguments made in the patent owner’s 

reply brief, to commenting on reply 

declaration testimony, or pointing to 

cross-examination testimony. 

In the special circumstance of a patent 

owner not filing either a reply or a 

revised MTA after receiving preliminary 

guidance from the Board, a petitioner 

may file a reply to the preliminary 

guidance, but such a reply may respond 

only to the preliminary guidance and 

may not be accompanied by new 

evidence. If a petitioner files a reply in 

this context, a patent owner may file a 

sur-reply, but that sur-reply may 

respond only to the petitioner’s reply 

and may not be accompanied by new 

evidence. 

If a patent owner files an MTA, the 

patent owner may, without prior 

authorization from the Board, file one 

revised MTA after receiving a 

petitioner’s opposition or the Board’s 

preliminary guidance (if requested). If 

the patent owner did not elect to receive 

preliminary guidance, the patent owner 

can still choose to file a revised MTA to 

address the petitioner’s opposition to 

the original MTA. 

Further, a revised MTA replaces the 

original MTA filed earlier in the 

proceeding. A patent owner may not 

incorporate by reference substitute 

claims or arguments presented in the 

original MTA into the revised MTA; all 

proposed substitute claims a patent 

owner wishes the Board to consider 

must be presented in the revised MTA. 

A revised MTA is an additional MTA 

that is automatically authorized under 

35 U.S.C. 316(d)(2) and 326(d)(2). The 

proposed revisions therefore distinguish 

between additional MTAs under 37 CFR 

42.121(c) and 42.221(c), which require 

pre-authorization upon a showing of 

‘‘good cause,’’ and a revised MTA, 

which may be filed without prior 

authorization. Where the term ‘‘any 

motion to amend’’ is used, the proposed 

rule refers to an original, additional, or 

revised MTA. 

A patent owner is not required to 

exercise either option under the MTA 

pilot program. Specifically, if a patent 

owner does not elect either to receive 

preliminary guidance on its original 

MTA or to file a revised MTA, the rules 

governing amendment of the patent are 

essentially unchanged from the practice 

prior to the MTA pilot program. See 

Lectrosonics, Inc. v. Zaxcom, Inc., 

IPR2018–01129, 2020 WL 407145, at *1 

(PTAB January 24, 2020) (precedential). 

The Office has tracked engagement 

with the MTA pilot program and 

published an updated study of the MTA 

pilot program, providing such data 

through March 31, 2023. See Patent 

Trial and Appeal Board Motion to 

Amend Study Installment 8, https://

www.uspto.gov/patents/ptab/motionsamend-study (last visited August 23, 

2023) (‘‘Study’’). The Study shows that, 

of 2,832 trials that were instituted 

during the MTA pilot program, 9% 

(264) of instituted trials included a MTA

(very close to the rate of MTAs filed

before the MTA pilot program, 10% of

all trials). Further, of the 264 instituted

trials with an MTA, 88% (232) included

a request for preliminary guidance, i.e.,

the first of two MTA pilot program

options. Still further, of those 232 trials

with an MTA requesting preliminary

guidance, 72% (168) filed either a

Patent Owner Reply (41) or a Revised

MTA (127), i.e., the second of two MTA

pilot program options. Additionally,

during the MTA pilot program study

period, 24% of final determinations had

at least one proposed substitute claim

granted entry, as opposed to 14% of

final determinations prior to the MTA

pilot program. To-date, no final

determination for an instituted

proceeding has been extended beyond

the one-year deadline based solely on

the involvement of the MTA pilot

program.

Allocation of Burdens of Persuasion and 

Scope of the Record in Motions To 

Amend 

The Office, through notice and 

comment rulemaking, published a final 

rule that allocated burdens of 

persuasion in relation to motions to 

amend and the patentability of 

substitute claims. See 37 CFR 42.121(d), 

42.221(d); Rules of Practice to Allocate 

the Burden of Persuasion on Motions to 

Amend in Trial Proceedings before the 

Patent Trial and Appeal Board, 85 FR 

82936 (December 21, 2020) (‘‘the 

burden-allocation rules’’). 

These burden-allocation rules assign 

the burden of persuasion to the patent 

owner to show, by a preponderance of 

the evidence, that an MTA complies 

with certain statutory and regulatory 

requirements. 37 CFR 42.121(d)(1), 

42.221(d)(1). These rules also assign the 

burden of persuasion to the petitioner to 

show, by a preponderance of the 

evidence, that any proposed substitute 

claims are unpatentable. 37 CFR 

42.121(d)(2), 42.221(d)(2). Finally, these 

rules further specify that irrespective of 

those burdens, the Board may, in the 

‘‘interests of justice’’ exercise its 

discretion to grant or deny an MTA, but 

‘‘only for reasons supported by readily 

identifiable and persuasive evidence of 

record.’’ 37 CFR 42.121(d)(3), 

42.221(d)(3); Hunting Titan, Inc. v. 

DynaEnergetics Europe GmbH, 

IPR2018–00600 (PTAB July 6, 2020) 

(Paper 67) (Hunting Titan). 

Situations meeting the interests of 

justice standard may include, for 

example, those in which ‘‘the petitioner 

has ceased to participate in the 

proceeding or chooses not to oppose the 

motion to amend, or those in which 

certain evidence regarding 

unpatentability has not been raised by 

either party but is so readily identifiable 

and persuasive that the Board should 

take it up in the interest of supporting 

the integrity of the patent system, 

notwithstanding the adversarial nature 

of the proceedings.’’ 85 FR 82924, 82927 

(citing Hunting Titan, Paper 67 at 12– 

13, 25–26). The rules further provide 

that in instances where the Board 

exercises its discretion in the interests 

of justice, the Board will provide the 

parties with an opportunity to respond 

before rendering a final decision on the 

MTA. Id. at 82927; see also 37 CFR 

42.121(d)(3), 42.221(d)(3). 

As noted in the final rule that 

allocated burdens of persuasion, ‘‘[i]n 

the vast majority of cases, the Board will 

consider only evidence a party 

introduces into the record of the 

proceeding.’’ 85 FR 82927. Thus, ‘‘[i]n 

most instances, in cases where the 


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petitioner has participated fully and 

opposed the motion to amend, the 

Office expects that there will be no need 

for the Board to independently justify a 

determination of unpatentability.’’ Id. at 

82927–28. That said, the Board may 

consider, for example ‘‘readily 

identifiable and persuasive evidence 

already before the Office in a related 

proceeding (i.e., in the prosecution 

history of the challenged patent or a 

related patent or application, or in the 

record of another proceeding before the 

Office challenging the same patent or a 

related patent).’’ Id. at 82927. Likewise, 

‘‘the Board may consider evidence that 

a district court can judicially notice 

under Federal Rule of Evidence 201.’’ 

Id.; see also 37 CFR 42.121(d)(3), 

42.221(d)(3) (‘‘[T]he Board may make of 

record only readily identifiable and 

persuasive evidence in a related 

proceeding before the Office or evidence 

that a district court can judicially 

notice.’’). 

Subsequent to the issuance of the 

burden-allocation rules, the United 

States Court of Appeals for the Federal 

Circuit issued a precedential decision in 

Hunting Titan, Inc., v. DynaEnergetics 

Europe GmbH, 28 F.4th 1371 (Fed. Cir. 

2022). The court confirmed that no 

court precedent has ‘‘established that 

the Board maintains an affirmative duty, 

without limitation or exception, to sua 

sponte raise patentability challenges to 

a proposed substitute claim.’’ Id. at 1381 

(citations omitted). The court also stated 

that ‘‘confining the circumstances in 

which the Board should sua sponte raise 

patentability issues was not itself 

erroneous.’’ Id. The court, however, 

found it ‘‘problematic’’ that the USPTO 

confined the Board’s discretion to only 

rare circumstances. Id. It also noted that 

the USPTO’s ‘‘substantial reliance on 

the adversarial system . . . overlooks 

the basic purpose of [inter partes 

review] proceedings: to reexamine an 

earlier agency decision and ensure that 

patent monopolies are kept within their 

legitimate scope.’’ Id. (citations 

omitted); see id. at 1385 (concurrence 

expressing concern that the burdenallocation rule’s requirement for 

‘‘readily identifiable and persuasive 

evidence’’ may prevent the Board from 

raising grounds ‘‘even when no one is 

around to oppose a new patent 

monopoly grant.’’). 

Under the rules as currently written 

and under Federal Circuit case law, the 

Board retains discretion to raise, or to 

not raise, grounds of unpatentability 

with respect to proposed substitute 

claims. See Nike, Inc. v. Adidas AG, 955 

F.3d 45, 53 (2020); Hunting Titan, 28 

F.4th at 1381. 

Consistent with the Board’s discretion 

to raise grounds of unpatentability, the 

MTA pilot program noted the Board’s 

discretion to solicit patent examiner 

assistance regarding the MTA when 

‘‘petitioner cease[d] to participate 

altogether in an AIA trial in which the 

patent owner file[d] an MTA, and the 

Board nevertheless exercise[d] its 

discretion to proceed with the trial.’’ 84 

FR 9502. If solicited by the Board, the 

assistance could include the preparation 

of an advisory report that provides an 

initial discussion about whether an 

MTA meets certain statutory and 

regulatory requirements (i.e., whether 

the amendment enlarges the scope of 

the claims of the patent or introduces 

new matter) and about the patentability 

of proposed substitute claims, for 

example, in light of prior art that was 

provided by the patent owner and/or 

obtained in prior art searches by the 

examiner. Id. As of issuance of this 

notice, the Board has not solicited 

examination assistance of this nature in 

exercising the Board’s discretion to raise 

or not to raise grounds of 

unpatentability. This proposed rule 

clarifies that the examination assistance 

to the Board may be effectuated by 

requesting that the Office conduct a 

prior art search. The proposed rule also 

clarifies that the Board’s request for the 

prior art search and the result of such 

a search by the Office will be made of 

record. 

2023 RFC on MTA Pilot Program and 

Burden-Allocation Rules 

After four years of experience with 

the MTA pilot program and 

development of Federal Circuit case law 

concerning burden allocation in the 

MTA context, the Office issued another 

Request for Comments to seeking 

feedback on the public’s experience 

with the program and the burdenallocation rules that apply to MTAs. See 

RFC Regarding MTA Pilot Program and 

Rules of Practice to Allocate Burdens of 

Persuasion on motions to Amend in 

Trial Proceedings Before the Patent Trial 

and Appeal Board, 88 FR 33063 (May 

23, 2023) (2023 RFC). The Office also 

sought feedback on when reexamination 

or reissue proceedings, also referred to 

as post-grant options, are better 

alternatives for patent owners seeking to 

amend claims. Id. at 33065–66. Further, 

the Office sought comments on whether 

the MTA pilot program should be 

modified and what barriers the Office 

could address to increase the 

effectiveness of MTA procedures. Id. at 

33066. 

The 2023 RFC also sought comments 

on the burden-allocation rules. In light 

of the Federal Circuit court’s 

commentary on the current rules, as 

well as the Board’s Hunting Titan 

decision, and given the Office’s desire to 

support the integrity of the patent 

system and to issue robust and reliable 

patent rights, the Office sought public 

comments on whether the Board should 

more broadly use its discretion to raise 

sua sponte grounds in the MTA process. 

Id. Additionally, the Office sought 

public comments on whether, and 

under what circumstances, the Office 

should solicit patent examiner 

assistance regarding an MTA or conduct 

a prior art search in relation to proposed 

substitute claims. Id. 

Furthermore, the Office recognized 

that if the Board exercises its discretion 

and raises its own grounds of 

unpatentability under the current rule, 

37 CFR 42.121(d)(3), the burdenallocation rules do not specifically state 

where the burden of persuasion lies for 

Board-raised grounds. The Office sought 

public comments on whether the 

burden-allocation rules should be 

revised to clarify who bears the burden 

of persuasion for grounds of 

unpatentability raised by the Board 

under 37 CFR 42.121(d)(3) or 

42.221(d)(3). See 88 FR 33066; see also 

Nike, Inc. v. Adidas AG, No. 2021–1903, 

2022 WL 4002668, at *4–10 (Fed. Cir. 

September 1, 2022) (leaving open the 

question ‘‘whether, in an inter partes 

review, the petitioner or Board bears the 

burden of persuasion for an 

unpatentability ground raised sua 

sponte by the Board against proposed 

substitute claims’’). The comments, and 

the rules proposed to address these 

comments and to enhance the Motions 

to Amend practice, are discussed below. 

Revisions in This Proposed Rule 

Response to Comments and Proposed 

Provisions on Preliminary Guidance and 

Revised Motions To Amend 

The MTA pilot program has been 

generally well-received, and one or both 

pilot program options are exercised in 

the vast majority of MTAs. Commenters 

to the 2023 RFC noted specifically that 

the option to request preliminary 

guidance has been popular among those 

participating in MTAs and has been 

effective, guiding patent owners to 

revise their MTAs in many cases. 

Although some commenters noted that 

motions to amend in general may not be 

as useful as other alternatives for claim 

amendments, none of the commenters 

stated that the Office should 

discontinue the options of issuing 

preliminary guidance and allowing the 

filing of a revised MTA as currently 

implemented. Some commenters, 

however, indicated that the Office 


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should consider providing more time for 

the MTA process. Commenters noted 

that parties may not have sufficient time 

after the preliminary guidance issues to 

address the preliminary guidance, 

secure expert testimony, and search for 

additional prior art. Proposals included 

having the Board hold a conference call 

to give parties an opportunity to offer a 

modified schedule. 

The Office appreciates the comments 

about the popularity and increased 

effectiveness of the MTA pilot program 

options, which are consistent with the 

Office’s experience as supported by 

utilization data. In proceedings with 

MTAs filed under the pilot, at least 88% 

of patent owners have elected one or 

both pilot options (i.e., a request for 

preliminary guidance, a revised MTA, 

or both). Based on its experience with 

the pilot program for the four-year 

period from its effective date in 2019, 

consideration of the formal feedback 

received in response to the 2023 RFC, as 

well as additional feedback received 

from a variety of stakeholders during the 

operation of the MTA pilot program 

itself, the Office proposes to formalize 

the options available to patent owners 

under the MTA pilot program. 

Accordingly, the Office now issues this 

proposed rule to implement the two 

options in the MTA pilot program: (1) 

requesting preliminary guidance and (2) 

filing, without pre-authorization, a 

revised MTA. 

To address the concerns raised as to 

the ability of parties to have sufficient 

time to fully take advantage of the MTA 

procedure, the Office proposes rule 

language clarifying the Board may 

extend deadlines in the MTA timeline. 

Such extensions are not anticipated to 

be needed in most cases, because the 

Board’s experience is that the default 

timelines have been sufficient to permit 

full and fair briefing in cases under the 

MTA pilot program. Thus, the Office 

will continue to apply the existing 

timelines by default as currently 

implemented under the MTA pilot 

program unless an extension is granted 

as discussed further below. See 84 FR 

9506–9507 (setting forth MTA pilot 

program timelines). 

The AIA provides the Director the 

discretion to extend the deadlines for 

issuing a final written decision for good 

cause and by not more than 6 months. 

35 U.S.C. 316 (a)(11), 326 (a)(11). The 

Director’s authority to extend the 

deadline of the final written decision 

has been delegated to the Chief 

Administrative Patent Judge. 37 CFR 

42.100(c), 42.200(c). Thus, pursuant to 

37 CFR 42.100(c) and 42.200(c), upon a 

showing of good cause, the Chief 

Administrative Patent Judge may extend 

the final written decision beyond the 

statutory deadline (one year from the 

date a trial is instituted) by up to six 

months, particularly, for example, if one 

or more circumstances are present in a 

proceeding, such as: (1) complex issues; 

(2) unavailability of the panel; or (3) 

need to accommodate additional papers 

(such as additional briefing or evaluate 

a requested examination search report). 

See e.g., Eden Park Illumination, Inc., v. 

S. Edward Neister, IPR2022–00381, 

Paper 51 (August 4, 2023 PTAB) 

(determining as good cause the 

involvement of a revised MTA with new 

prior art, resulting in substantially 

compressed schedule, multiple 

postponements of the oral hearing due 

to scheduling conflicts, and additional 

briefing); Hope Medical Enterprises, Inc. 

v. Fennec Pharmaceuticals Inc., 

IPR2022–00125, Paper 35 (April 18, 

2023 PTAB) (determining as good cause 

the involvement of a revised MTA, 

resulting in a compressed schedule, 

with the revised claims subject to 

asserted grounds of unpatentability 

based on combination of at least four 

references); Snap, Inc., v. Palo Alto 

Research Center Inc., IPR2021–00986, 

Paper 46 (November 7, 2022) 

(determining as good cause the 

substantial coordination of proceedings 

required by the Board due to multiple 

pending motions to amend). 

As for deadlines that are not of a final 

written decision, typically, a panel of 

the Board determines whether to grant 

a good-cause extension under 37 CFR 

42.5(c)(2) after request from and 

conference with the parties. In the 

context of the MTA timelines, the Board 

will continue to consider whether to 

grant extensions of those timelines as 

required by the Board’s rules discussed 

above. In particular, the Board may 

determine at any time during the 

pendency of the case, but more 

specifically upon issuing the 

preliminary guidance or receiving a 

revised MTA, whether for good cause 

the particular circumstances raised by 

the parties to the proceeding warrant an 

extension of deadlines, including 

whether to extend the deadline for the 

final written decision, which can only 

be granted by the Chief Administrative 

Patent Judge under 37 CFR 42.100(c) 

and 42.200(c). When an extension is 

granted, the parties will be notified of 

the change in the due dates for the 

remainder of the deadlines and events 

in the proceeding. 

Response to Comments on the Reissue 

and Reexamination Options 

The 2023 RFC sought comments 

regarding whether reexamination and/or 

reissue proceedings are better options 

for patent owners seeking to amend 

claims in AIA proceedings as compared 

to the MTA pilot program. 88 FR 33065– 

66. Although the majority of the 

comments supported use of the MTA 

pilot program, in response to this 

question some comments stated a 

preference to avoid the MTA process 

altogether. As to the desirability of 

pursuing reissue or reexamination in 

connection with an AIA trial 

proceeding, a summary of the 

alternatives for seeking claim 

amendments before, during, and after a 

post-grant proceeding has been 

provided in a prior notice. Notice 

Regarding Options for Amendments by 

Patent Owner Through Reissue or 

Reexamination During a Pending AIA 

Trial Proceeding (April 2019), 84 FR 

16654 (April 22, 2019) (reissue and 

reexamination notice). The reissue and 

reexamination notice provides a 

summary of various pertinent practices 

regarding existing Office procedures 

that apply to reissue and reexamination, 

including after a petitioner files an AIA 

petition challenging claims of the same 

patent, after the Board institutes a trial, 

and after the Board issues a final written 

decision in an AIA trial proceeding. Id. 

at 16655–58. The notice also provides 

summary information about factors the 

Office currently considers when 

determining whether to stay or suspend 

a reissue proceeding, or stay a 

reexamination, that involves a patent 

involved in an AIA proceeding and 

when and whether to lift such a stay or 

suspension. Id. at 16656–58. 

Some commenters stated that the 

usefulness of a reissue and 

reexamination is reduced given the 

likelihood of their stay during the postgrant proceeding, including through 

appeals of the final written decision at 

the Federal Circuit. In the event a party 

is considering the impact of a possible 

stay of the reissue and reexamination 

proceedings, the reissue and 

reexamination notice states that a stay of 

an ex parte reexamination may be lifted 

‘‘notwithstanding a Federal Circuit 

appeal of a final written decision on the 

same patent.’’ Id. at 16658. The 

proposed rules do not change our 

current guidance in the reissue and 

reexamination notice. 

Response to Comments and Proposed 

Provisions on Allocation of Burden and 

Evidence of Record for Proposed 

Amended Claims 

Regarding the burden-allocation rules, 

commenters favored continuing the 

exercise of discretion by the Board to 

raise new grounds of unpatentability. 

Some favored the exercise of discretion 

more broadly, i.e., for the Board to 


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consider all prior art of record and 

conduct a prior art search in each case 

where an MTA is filed. Other 

commenters favored the Board 

considering the entirety of the record, 

but did not favor the Board conducting 

a prior art search, primarily because of 

the compressed case timelines. 

In recognition of these comments, and 

in view of Office experience, the Office 

proposes changes to the rules to address 

comments in favor of the Board’s 

authority to consider the entirety of the 

art of record and to request examination 

assistance in an appropriate manner 

when justified by circumstances. The 

Office agrees that the burden-allocation 

rule should give the Board the ability to 

more broadly use its discretion to raise 

grounds of unpatentability and to 

consider all the prior art of record in the 

proceeding without limitation. 

Further, consistent with current 

practice reflected in the MTA pilot 

program, the Office proposes rules 

clarifying that the Board may seek 

examination assistance in certain 

circumstances. 84 FR 9502. For 

example, the Board has discretion to 

solicit examination assistance if the 

petitioner ceases to participate 

altogether in an AIA trial in which the 

patent owner files an MTA and the 

Board nevertheless exercises its 

discretion to proceed with the trial 

thereafter. Id. The Board may also solicit 

examination assistance when a 

petitioner continues to participate in the 

AIA trial but either does not oppose or 

has ceased to oppose an MTA. 

Examination assistance could include 

the preparation of an advisory report 

that provides an initial discussion of 

whether an MTA meets certain statutory 

and regulatory requirements (i.e., 

whether the amendment enlarges the 

scope of the claims of the patent or 

introduces new matter), as well as the 

patentability of proposed substitute 

claims in light of prior art that was 

provided by the patent owner and/or 

obtained in prior art searches by the 

examiner. Id. The proposed rule 

confirms the Board’s discretion to seek 

examination assistance by clarifying 

that the Office may conduct a prior art 

search at the Board’s request when no 

petitioner opposes or all petitioners 

cease to oppose an MTA. The proposed 

rule is intended to capture situations 

where no opposition is filed or an 

opposition is filed but other situations 

constitute a lack of opposition, such as 

the filing of an illusory opposition to the 

MTA or a petitioner filing that raises no 

prior art challenge. The proposed rule 

also clarifies that the Board may make 

of record any evidence identified 

through a prior art search undertaken at 

the Board’s request. Additionally, the 

proposed rule provides that the Board’s 

request and the prior art search report 

prepared by the Office at the request of 

the Board will be made of record. 

The 2023 RFC also resulted in 

comments concerning the burden of 

persuasion on Board-raised grounds. 

One commenter proposed that the postgrant proceeding scheme should remain 

strictly adversarial, with the burden of 

persuasion on unpatentability issues 

remaining with petitioner at all times. 

Another commenter proposed that on 

Board-raised grounds, the Board has the 

‘‘burden.’’ Other commenters noted that 

the statute is silent on this issue and 

that a patent owner must not bear this 

burden. 

The Board is a neutral tribunal and 

the notion of burden allocation to the 

Board in determining whether to grant 

or deny an MTA is incongruent with the 

discharge of its adjudicatory functions. 

Notwithstanding this incongruity, the 

Office recognizes the need for clarity 

and consistency in the application of 

the Board’s exercise of discretion in 

connection with raising new grounds of 

unpatentability for proposed claims 

presented in an MTA. The proposed 

rule clarifies that the Board determines 

unpatentability on the new ground by 

reference to the evidence of record or 

made of record and based on a 

preponderance of the evidence. Support 

for the Board’s responsibility in this 

regard has been established in current 

precedent of the Board. Lectrosonics, 

Inc. v. Zaxcom, Inc., IPR2018–01129, 

2020 WL 407145, at *1 (‘‘The Board 

itself also may justify any finding of 

unpatentability by reference to evidence 

of record in the proceeding, for 

example, when a petitioner ceases to 

participate. . . . Thus, the Board 

determines whether substitute claims 

are unpatentable by a preponderance of 

the evidence based on the entirety of the 

record, including any opposition made 

by the petitioner.’’). 

Furthermore, the Office proposes to 

broaden the body of evidence that the 

Board may consider and make of record, 

to now include the entire evidence of 

record in the proceeding, without 

limitation, in accordance with Nike, Inc. 

v. Adidas AG, 955 F.3d at 54 (‘‘[T]he 

Board may rely on prior art of record in 

considering the patentability of 

amended claims.’’). By removing 

limitations of the ‘‘interests of justice’’ 

and of considering ‘‘only readily 

identifiable and persuasive’’ evidence 

and no longer relying solely on the 

adversarial system, the proposed rule 

alleviates the Federal Circuit’s concern 

that the Board confined its discretion to 

only rare circumstances. See Hunting 

Titan, 28 F.4th at 1381 (noting that the 

USPTO’s ‘‘substantial reliance on the 

adversarial system . . . overlooks the 

basic purpose of [inter partes review] 

proceedings: to reexamine an earlier 

agency decision and ensure ‘that patent 

monopolies are kept within their 

legitimate scope.’ ’’); see also id. at 1385 

(concurrence expressing concern that 

the burden-allocation rule’s requirement 

for ‘‘readily identifiable and persuasive 

evidence’’ may prevent the Board from 

raising grounds ‘‘even when no one is 

around to oppose a new patent 

monopoly grant’’). 

The proposed rule moves away from 

the Board’s precedential Hunting Titan 

decision. Hunting Titan, Inc. v. 

DynaEnergetics Europe GmbH, 

IPR2018–00600 (PTAB July 6, 2020) 

(Paper 67). That decision, criticized by 

the Federal Circuit, is at odds with the 

proposed broader authority of the Board 

to raise grounds sua sponte. 

Accordingly, the Hunting Titan decision 

shall be de-designated from precedential 

status upon the effective date of the 

final rule. 

Discussion of Specific Rules 

Sections 42.121 and 42.221 

Sections 42.121(a) and 42.221(a) are 

proposed to be amended to refer to 

original motions to amend and to allow 

for requests for preliminary guidance on 

an original motion to amend. 

Sections 42.121(b) and 42.221(b) are 

proposed to be amended to clarify that 

the regulation applies to any motion to 

amend and that support in the original 

disclosure must be included for each 

proposed substitute claim. 

Sections 42.121(d) and 42.221(d) are 

proposed to be amended to provide that 

the Board may consider all evidence of 

record in the proceeding when 

exercising its discretion to grant or deny 

a motion to amend or raise a new 

ground of unpatentability in connection 

with a proposed substitute claim. The 

proposed amendment to each regulation 

further provides that the Board may 

consider, and may make of record, any 

evidence in a related proceeding before 

the Office and evidence that a district 

court can judicially notice. Each is also 

proposed to be amended to provide that 

the Board may, when no petitioner 

opposes or all petitioners cease to 

oppose the motion to amend, consider, 

and make of record, evidence identified 

through a prior art search conducted by 

the Office at the Board’s request. The 

proposed provisions further require that 

when the Board exercises its discretion 

in connection with a motion to amend, 

the Board determine unpatentability on 

the new ground by reference to the 


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evidence of record or made of record 

and based on a preponderance of the 

evidence. The proposed revisions also 

require that the Board’s request for and 

the result of a prior art search conducted 

by the Office at the Board’s request will 

be made of record. 

Sections 42.121(e) and 42.221(e) are 

proposed to be added to provide for an 

opportunity to request preliminary 

guidance, consistent with the MTA pilot 

program. Such guidance will not be 

binding on the Board, is not a 

‘‘decision’’ under 37 CFR 42.71(d) and 

is not a final agency action. The 

proposed provision provides that a 

patent owner will be permitted to file a 

reply to the petitioner’s opposition to 

the motion to amend, preliminary 

guidance (if requested and no 

opposition is filed), or a revised MTA as 

discussed in §§ 42.121(f) and 42.221(f). 

The reply or revised MTA may be 

accompanied by new evidence. 

Moreover, the proposed provision 

provides that, if a patent owner does not 

file either a reply or a revised MTA after 

receiving preliminary guidance from the 

Board, the petitioner may file a reply to 

the preliminary guidance, but such a 

reply may only respond to the 

preliminary guidance and may not be 

accompanied by new evidence. If the 

petitioner files a reply in this context, a 

patent owner may file a sur-reply, but 

that sur-reply may only respond to the 

petitioner’s reply and may not be 

accompanied by new evidence. 

Further, the proposed provision 

provides that the Board may, upon 

issuing the preliminary guidance, for 

good cause and on a case-by-case basis, 

determine whether to extend the final 

written decision more than one year 

from the date a trial is instituted in 

accordance with §§ 42.100(c) and 

42.200(c) and whether to extend any 

remaining deadlines under § 42.5(c). 

The proposed rule adds §§ 42.121(f) 

and 42.221(f) to provide for an 

opportunity for a patent owner to file 

one revised motion to amend, consistent 

with the MTA pilot program. Such a 

revised motion to amend must be 

responsive to issues raised in the 

preliminary guidance, or the petitioner’s 

opposition to the motion to amend and 

include one or more new proposed 

substitute claims in place of previously 

presented substitute claims, where each 

new proposed substitute claim presents 

a new claim amendment. Any revised 

motion to amend replaces the original 

motion to amend in the proceeding. 

Further, the Board may, upon 

receiving the revised motion to amend, 

for good cause and on a case-by-case 

basis, determine whether to extend the 

final written decision more than one 

year from the date a trial is instituted in 

accordance with §§ 42.100(c) and 

42.200(c) and whether to extend any 

remaining deadlines under § 42.5(c). 

Rulemaking Considerations 

A. Administrative Procedure Act (APA) 

This rulemaking proposes changes to 

the consolidated set of rules relating to 

Office trial practice for IPR, PGR, CBM, 

and derivation proceedings. The 

changes proposed in this rulemaking do 

not alter the substantive criteria of 

patentability. These changes involve 

rules of agency practice. See, e.g., 35 

U.S.C. 316(a)(5), as amended. The 

changes proposed by this rulemaking 

involve rules of agency practice and 

procedure, and/or interpretive rules, 

and do not require notice-and-comment 

rulemaking. See Perez v. Mortg. Bankers 

Ass’n, 575 U.S. 92, 97, 101 (2015) 

(explaining that interpretive rules 

‘‘advise the public of the agency’s 

construction of the statutes and rules 

which it administers’’ and do not 

require notice and comment when 

issued or amended); Cooper Techs. Co. 

v. Dudas, 536 F.3d 1330, 1336–37 (Fed. 

Cir. 2008) (5 U.S.C. 553, and thus 35 

U.S.C. 2(b)(2)(B), do not require noticeand-comment rulemaking for 

‘‘interpretative rules, general statements 

of policy, or rules of agency 

organization, procedure, or practice’’); 

and JEM Broadcasting Co. v. F.C.C., 22 

F.3d 320, 328 (D.C. Cir. 1994) 

(explaining that rules are not legislative 

because they do not ‘‘foreclose effective 

opportunity to make one’s case on the 

merits.’’). 

Nevertheless, the USPTO is 

publishing this proposed rule for 

comment to seek the benefit of the 

public’s views on the Office’s proposed 

regulatory changes. 

B. Regulatory Flexibility Act 

For the reasons set forth herein, the 

Senior Counsel for Legislative and 

Regulatory Affairs of the Office of 

General Law at the USPTO has certified 

to the Chief Counsel for Advocacy of the 

Small Business Administration that 

changes proposed in this rulemaking 

will not have a significant economic 

impact on a substantial number of small 

entities. See 5 U.S.C. 605(b). 

The changes proposed in this 

rulemaking would revise certain trial 

practice procedures before the Board. 

Specifically, the Office proposes to 

amend the rules of practice before the 

Board to reflect current Board practice, 

as set forth in various precedential and 

informative Board decisions, as well as 

the Office’s Trial Practice Guide. 

Specifically, the Office proposes to 

amend the rules of practice to make 

permanent certain provisions of the 

Office’s MTA pilot program. These 

changes are procedural in nature, and 

any requirements resulting from the 

proposed changes are of minimal or no 

additional burden to those practicing 

before the Board. 

For the foregoing reasons, the changes 

proposed in this rulemaking will not 

have a significant economic impact on 

a substantial number of small entities. 

C. Executive Order 12866 (Regulatory 

Planning and Review) 

This rulemaking has been determined 

to be not significant for purposes of 

Executive Order 12866 (September 30, 

1993), as amended by Executive Order 

14094 (April 6, 2023). 

D. Executive Order 13563 (Improving 

Regulation and Regulatory Review) 

The Office has complied with 

Executive Order 13563 (January 18, 

2011). Specifically, and as discussed 

above, the Office has, to the extent 

feasible and applicable: (1) made a 

reasoned determination that the benefits 

justify the costs of the rule; (2) tailored 

the rule to impose the least burden on 

society consistent with obtaining the 

regulatory objectives; (3) selected a 

regulatory approach that maximizes net 

benefits; (4) specified performance 

objectives; (5) identified and assessed 

available alternatives; (6) involved the 

public in an open exchange of 

information and perspectives among 

experts in relevant disciplines, affected 

stakeholders in the private sector, and 

the public as a whole and provided 

online access to the rulemaking docket; 

(7) attempted to promote coordination, 

simplification, and harmonization 

across government agencies and 

identified goals designed to promote 

innovation; (8) considered approaches 

that reduce burdens and maintain 

flexibility and freedom of choice for the 

public; and (9) ensured the objectivity of 

scientific and technological information 

and processes. 

E. Executive Order 13132 (Federalism) 

This rulemaking pertains strictly to 

Federal agency procedures and does not 

contain policies with federalism 

implications sufficient to warrant 

preparation of a Federalism Assessment 

under Executive Order 13132 (August 4, 

1999). 

F. Executive Order 13175 (Tribal 

Consultation) 

This rulemaking will not: (1) have 

substantial direct effects on one or more 

Indian tribes; (2) impose substantial 

direct compliance costs on Indian tribal 


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governments; or (3) preempt tribal law. 

Therefore, a tribal summary impact 

statement is not required under 

Executive Order 13175 (November 6, 

2000). 

G. Executive Order 13211 (Energy 

Effects) 

This rulemaking is not a significant 

energy action under Executive Order 

13211 because this rulemaking is not 

likely to have a significant adverse effect 

on the supply, distribution, or use of 

energy. Therefore, a Statement of Energy 

Effects is not required under Executive 

Order 13211 (May 18, 2001). 

H. Executive Order 12988 (Civil Justice 

Reform) 

This rulemaking meets applicable 

standards to minimize litigation, 

eliminate ambiguity, and reduce burden 

as set forth in sections 3(a) and 3(b)(2) 

of Executive Order 12988 (February 5, 

1996). 

I. Executive Order 13045 (Protection of 

Children) 

This rulemaking does not concern an 

environmental risk to health or safety 

that may disproportionately affect 

children under Executive Order 13045 

(April 21, 1997). 

J. Executive Order 12630 (Taking of 

Private Property) 

This rulemaking will not affect a 

taking of private property or otherwise 

have taking implications under 

Executive Order 12630 (March 15, 

1988). 

K. Congressional Review Act 

Under the Congressional Review Act 

provisions of the Small Business 

Regulatory Enforcement Fairness Act of 

1996 (5 U.S.C. 801 et seq.), prior to 

issuing any final rule, the USPTO will 

submit a report containing the rule and 

other required information to the United 

States Senate, the United States House 

of Representatives, and the Comptroller 

General of the Government 

Accountability Office. The changes in 

this proposed rule are not expected to 

result in an annual effect on the 

economy of $100 million or more, a 

major increase in costs or prices, or 

significant adverse effects on 

competition, employment, investment, 

productivity, innovation, or the ability 

of United States-based enterprises to 

compete with foreign-based enterprises 

in domestic and export markets. 

Therefore, this rulemaking is not a 

‘‘major rule’’ as defined in 5 U.S.C. 

804(2). 

L. Unfunded Mandates Reform Act of 

1995 

The changes set forth in this 

rulemaking do not involve a Federal 

intergovernmental mandate that will 

result in the expenditure by state, local, 

and tribal governments, in the aggregate, 

of $100 million (as adjusted) or more in 

any one year, or a Federal private sector 

mandate that will result in the 

expenditure by the private sector of 

$100 million (as adjusted) or more in 

any one year, and will not significantly 

or uniquely affect small governments. 

Therefore, no actions are necessary 

under the provisions of the Unfunded 

Mandates Reform Act of 1995. See 2 

U.S.C. 1501 et seq. 

M. National Environmental Policy Act of 

1969 

This rulemaking will not have any 

effect on the quality of the environment 

and is thus categorically excluded from 

review under the National 

Environmental Policy Act of 1969. See 

42 U.S.C. 4321 et seq. 

N. National Technology Transfer and 

Advancement Act of 1995 

The requirements of section 12(d) of 

the National Technology Transfer and 

Advancement Act of 1995 (15 U.S.C. 

272 note) are not applicable because this 

rulemaking does not contain provisions 

that involve the use of technical 

standards. 

O. Paperwork Reduction Act of 1995 

The Paperwork Reduction Act of 1995 

(44 U.S.C. 3501–3549) requires that the 

Office consider the impact of paperwork 

and other information collection 

burdens imposed on the public. 

In accordance with section 3507(d) of 

the Paperwork Reduction Act of 1995 

(44 U.S.C. 3501 et seq.), the paperwork 

and other information collection 

burdens discussed in this proposed 

rulemaking have already been approved 

under Office of Management and Budget 

(OMB) Control Number 0651–0069 

(Patent Review and Derivations). 

Notwithstanding any other provision 

of law, no person is required to respond 

to, nor shall any person be subject to, a 

penalty for failure to comply with a 

collection of information subject to the 

requirements of the Paperwork 

Reduction Act unless that collection of 

information has valid OMB control 

number. 

List of Subjects in 37 CFR Part 42 

Administrative practice and 

procedure, Inventions and patents, 

Lawyers. 

For the reasons set forth in the 

preamble, the Office proposes to amend 

37 CFR part 42 as follows: 

PART 42—TRIAL PRACTICE BEFORE 

THE PATENT TRIAL AND APPEAL 

BOARD 

■ 1. The authority citation for 37 CFR 

part 42 continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 

135, 311, 312, 316, 321–326; Pub. L. 112–29, 

125 Stat. 284; and Pub. L. 112–274, 126 Stat. 

2456. 

■ 2. Revise § 42.121 to read as follows: 

§ Amendment of the patent. 

(a) Motion to amend—(1) Original 

motion to amend. A patent owner may 

file one original motion to amend a 

patent, but only after conferring with 

the Board. 

(i) Due date. Unless a due date is 

provided in a Board order, an original 

motion to amend must be filed no later 

than the filing of a patent owner 

response. 

(ii) Request for preliminary guidance. 

If a patent owner wishes to receive 

preliminary guidance from the Board as 

discussed in paragraph (e) of this 

section, the original motion to amend 

must include the patent owner’s request 

for that preliminary guidance. 

(2) Scope. Any motion to amend may 

be denied where: 

(i) The amendment does not respond 

to a ground of unpatentability involved 

in the trial; or 

(ii) The amendment seeks to enlarge 

the scope of the claims of the patent or 

introduce new subject matter. 

(3) A reasonable number of substitute 

claims. Any motion to amend may 

cancel a challenged claim or propose a 

reasonable number of substitute claims. 

The presumption is that only one 

substitute claim will be needed to 

replace each challenged claim, and it 

may be rebutted by a demonstration of 

need. 

(b) Content. Any motion to amend 

claims must include a claim listing, 

which claim listing may be contained in 

an appendix to the motion, show the 

changes clearly, and set forth: 

(1) The support in the original 

disclosure of the patent for each 

proposed substitute claim; and 

(2) The support in an earlier-filed 

disclosure for each claim for which the 

benefit of the filing date of the earlierfiled disclosure is sought. 

(c) Additional motion to amend. 

Except as provided in paragraph (f) of 

this section, any additional motion to 

amend may not be filed without Board 

authorization. An additional motion to 

amend may be authorized when there is 


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a good cause showing or a joint request 

of the petitioner and the patent owner 

to materially advance a settlement. In 

determining whether to authorize such 

an additional motion to amend, the 

Board will consider whether a petitioner 

has submitted supplemental 

information after the time period set for 

filing a motion to amend in paragraph 

(a)(1)(i) of this section. 

(d) Burden of persuasion. On any 

motion to amend: 

(1) Patent owner’s burden. A patent 

owner bears the burden of persuasion to 

show, by a preponderance of the 

evidence, that the motion to amend 

complies with the requirements of 

paragraphs (1) and (3) of 35 U.S.C. 

316(d), as well as paragraphs (a)(2) and 

(3) and (b)(1) and (2) of this section; 

(2) Petitioner’s burden. A petitioner 

bears the burden of persuasion to show, 

by a preponderance of the evidence, that 

any proposed substitute claims are 

unpatentable; and 

(3) Exercise of Board discretion. 

Irrespective of paragraphs (d)(1) and (2) 

of this section, the Board may exercise 

its discretion to grant or deny a motion 

to amend or raise a new ground of 

unpatentability in connection with a 

proposed substitute claim. Where the 

Board exercises its discretion to raise a 

new ground of unpatentability in 

connection with a proposed substitute 

claim, the parties will have notice and 

an opportunity to respond. In the 

exercise of this discretion under this 

paragraph (d)(3) the Board may consider 

all evidence of record in the proceeding. 

The Board also may consider and make 

of record: 

(i) Any evidence in a related 

proceeding before the Office and 

evidence that a district court can 

judicially notice; and 

(ii) When no petitioner opposes or all 

petitioners cease to oppose a motion to 

amend, prior art identified through a 

prior art search conducted by the Office 

at the Board’s request. The request for 

and the results of a prior art search 

conducted by the Office at the Board’s 

request will be made of record. 

(4) Determination of unpatentability. 

Where the Board exercises its discretion 

under paragraph (d)(3) of this section, 

the Board must determine 

unpatentability based on a 

preponderance of the evidence of record 

or made of record. 

(e) Preliminary guidance. (1) In its 

original motion to amend, a patent 

owner may request that the Board 

provide preliminary guidance setting 

forth the Board’s initial, preliminary 

views on the original motion to amend, 

including whether the parties have 

shown a reasonable likelihood of 

meeting their respective burdens of 

persuasion as set forth under paragraphs 

(d)(1) and (2) of this section and notice 

of any new ground of unpatentability 

discretionarily raised by the Board 

under paragraph (d)(3) of this section. 

The Board may, upon issuing the 

preliminary guidance, determine 

whether to extend the final written 

decision more than one year from the 

date a trial is instituted in accordance 

with § 42.100(c) and whether to extend 

any remaining deadlines under 

§ 42.5(c)(2). 

(2) Any preliminary guidance 

provided by the Board on an original 

motion to amend will not be binding on 

the Board in any subsequent decision in 

the proceeding, is not a ‘‘decision’’ 

under § 42.71(d) that may be the subject 

of a request for rehearing and is not a 

final agency action. 

(3) In response to the Board’s 

preliminary guidance, a patent owner 

may file a reply to the petitioner’s 

opposition to the motion to amend, the 

preliminary guidance (if no opposition 

is filed), or a revised motion to amend 

as discussed in paragraph (f) of this 

section. The reply or revised motion to 

amend may be accompanied by new 

evidence. If a patent owner does not file 

either a reply or a revised motion to 

amend after receiving preliminary 

guidance from the Board, the petitioner 

may file a reply to the preliminary 

guidance, but such a reply may only 

respond to the preliminary guidance 

and may not be accompanied by new 

evidence. If the petitioner files a reply 

in this context, a patent owner may file 

a sur-reply, but that sur-reply may only 

respond to the petitioner’s reply and 

may not be accompanied by new 

evidence. 

(f) Revised motion to amend. (1) 

Irrespective of paragraph (c) of this 

section, a patent owner may, without 

prior authorization from the Board, file 

one revised motion to amend after 

receiving an opposition to the original 

motion to amend or after receiving the 

Board’s preliminary guidance. The 

Board may, upon receiving the revised 

motion to amend, determine whether to 

extend the final written decision more 

than one year from the date a trial is 

instituted in accordance with 

§ 42.100(c) and whether to extend any 

remaining deadlines under § 42.5(c)(2). 

(2) A revised motion to amend must 

be responsive to issues raised in the 

preliminary guidance or in the 

petitioner’s opposition to the motion to 

amend and must include one or more 

new proposed substitute claims in place 

of the previously presented substitute 

claims, where each new proposed 

substitute claim presents a new claim 

amendment. 

(3) If a patent owner files a revised 

motion to amend, that revised motion to 

amend replaces the original motion to 

amend in the proceeding. 

■ 3. Revise § 42.221 to read as follows: 

§ 42.221 Amendment of the patent. 

(a) Motion to amend—(1) Original 

motion to amend. A patent owner may 

file one original motion to amend a 

patent, but only after conferring with 

the Board. 

(i) Due date. Unless a due date is 

provided in a Board order, an original 

motion to amend must be filed no later 

than the filing of a patent owner 

response. 

(ii) Request for preliminary guidance. 

If a patent owner wishes to receive 

preliminary guidance from the Board as 

discussed in paragraph (e) of this 

section, the original motion to amend 

must include the patent owner’s request 

for that preliminary guidance. 

(2) Scope. Any motion to amend may 

be denied where: 

(i) The amendment does not respond 

to a ground of unpatentability involved 

in the trial; or 

(ii) The amendment seeks to enlarge 

the scope of the claims of the patent or 

introduce new subject matter. 

(3) A reasonable number of substitute 

claims. Any motion to amend may 

cancel a challenged claim or propose a 

reasonable number of substitute claims. 

The presumption is that only one 

substitute claim will be needed to 

replace each challenged claim, and it 

may be rebutted by a demonstration of 

need. 

(b) Content. Any motion to amend 

claims must include a claim listing, 

which claim listing may be contained in 

an appendix to the motion, show the 

changes clearly, and set forth: 

(1) The support in the original 

disclosure of the patent for each 

proposed substitute claim; and 

(2) The support in an earlier-filed 

disclosure for each claim for which the 

benefit of the filing date of the earlierfiled disclosure is sought. 

(c) Additional motion to amend. 

Except as provided by paragraph (f) of 

this section, any additional motion to 

amend may not be filed without Board 

authorization. An additional motion to 

amend may be authorized when there is 

a good cause showing or a joint request 

of the petitioner and the patent owner 

to materially advance a settlement. In 

determining whether to authorize such 

an additional motion to amend, the 

Board will consider whether a petitioner 

has submitted supplemental 

information after the time period set for 


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15540 Federal Register / Vol. 89, No. 43 / Monday, March 4, 2024 / Proposed Rules 

filing a motion to amend in paragraph 

(a)(1)(i) of this section. 

(d) Burden of persuasion. On any 

motion to amend: 

(1) Patent owner’s burden. A patent 

owner bears the burden of persuasion to 

show, by a preponderance of the 

evidence, that the motion to amend 

complies with the requirements of 

paragraphs (1) and (3) of 35 U.S.C. 

326(d), as well as paragraphs (a)(2) and 

(3) and (b)(1) and (2) of this section; 

(2) Petitioner’s burden. A petitioner 

bears the burden of persuasion to show, 

by a preponderance of the evidence, that 

any proposed substitute claims are 

unpatentable; and 

(3) Exercise of Board discretion. 

Irrespective of paragraphs (d)(1) and (2) 

of this section, the Board may exercise 

its discretion to grant or deny a motion 

to amend or raise a new ground of 

unpatentability in connection with a 

proposed substitute claim. Where the 

Board exercises its discretion to raise a 

new ground of unpatentability in 

connection with a proposed substitute 

claim, the parties will have notice and 

an opportunity to respond. In the 

exercise of discretion under this 

paragraph (d)(3), the Board may 

consider all evidence of record in the 

proceeding. The Board also may 

consider and may make of record: 

(i) Any evidence in a related 

proceeding before the Office and 

evidence that a district court can 

judicially notice; and 

(ii) When no petitioner opposes or all 

petitioners cease to oppose a motion to 

amend, prior art identified through a 

prior art search conducted by the Office 

at the Board’s request. A request for and 

result of a prior art search conducted by 

the Office at the Board’s request will be 

made of record. 

(4) Determination of unpatentability. 

Where the Board exercises its discretion 

under paragraph (d)(3) of this section, 

the Board must determine 

unpatentability based on a 

preponderance of the evidence of record 

or made of record. 

(e) Preliminary guidance. (1) In its 

original motion to amend, a patent 

owner may request that the Board 

provide preliminary guidance setting 

forth the Board’s initial, preliminary 

views on the original motion to amend, 

including whether the parties have 

shown a reasonable likelihood of 

meeting their respective burdens of 

persuasion as set forth under paragraphs 

(d)(1) and (2) of this section and notice 

of any new ground of unpatentability 

discretionarily raised by the Board 

under paragraph (d)(3) of this section. 

The Board may, upon issuing the 

preliminary guidance, determine 

whether to extend the final written 

decision more than one year from the 

date a trial is instituted in accordance 

with § 42.200(c) and whether to extend 

any remaining deadlines under 

§ 42.5(c)(2). 

(2) Any preliminary guidance 

provided by the Board on an original 

motion to amend will not be binding on 

the Board in any subsequent decision in 

the proceeding, is not a ‘‘decision’’ 

under § 42.71(d) that may be the subject 

of a request for rehearing, and is not a 

final agency action. 

(3) In response to the Board’s 

preliminary guidance, a patent owner 

may file a reply to the petitioner’s 

opposition to the motion to amend, 

preliminary guidance (no opposition is 

filed), or a revised motion to amend as 

discussed in paragraph (f) of this 

section. The reply or revised motion to 

amend may be accompanied by new 

evidence. If a patent owner does not file 

either a reply or a revised motion to 

amend after receiving preliminary 

guidance from the Board, the petitioner 

may file a reply to the preliminary 

guidance, but such a reply may only 

respond to the preliminary guidance 

and may not be accompanied by new 

evidence. If the petitioner files a reply 

in this context, a patent owner may file 

a sur-reply, but that sur-reply may only 

respond to the petitioner’s reply and 

may not be accompanied by new 

evidence. 

(f) Revised motion to amend. (1) 

Irrespective of paragraph (c) of this 

section, a patent owner may, without 

prior authorization from the Board, file 

one revised motion to amend after 

receiving an opposition to the original 

motion to amend or after receiving the 

Board’s preliminary guidance. The 

Board may, upon receiving the revised 

motion to amend, determine whether to 

extend the final written decision more 

than one year from the date a trial is 

instituted in accordance with 

§ 42.200(c) and whether to extend any 

remaining deadlines under § 42.5(c)(2). 

(2) A revised motion to amend must 

be responsive to issues raised in the 

preliminary guidance, if requested, or in 

the petitioner’s opposition to the motion 

to amend, and must include one or more 

new proposed substitute claims in place 

of the previously presented substitute 

claims, where each new proposed 

substitute claim presents a new claim 

amendment. 

(3) If a patent owner files a revised 

motion to amend, that revised motion to 

amend replaces the original motion to 

amend in the proceeding. 

Katherine K. Vidal, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2024–04127 Filed 3–1–24; 8:45 am] 

BILLING CODE 3510–16–P 

FEDERAL COMMUNICATIONS 

COMMISSION 

47 CFR Part 15 

[ET Docket No. 18–295 and GN Docket No. 

17–183; FCC 23–86; FR ID 192755] 

Unlicensed Use of the 6 GHz Band; 

and Expanding Flexible Use in MidBand Spectrum Between 3.7 and 24 

GHz; Correction 

AGENCY: Federal Communications 

Commission. 

ACTION: Proposed rule; correction. 

SUMMARY: The Federal Communications 

Commission is correcting the docket 

numbers for commenters under the 

preamble section titled, ADDRESSES, of 

the proposed rule that appeared in the 

Federal Register on February 26, 2024. 

FOR FURTHER INFORMATION CONTACT: 

Nicholas Oros of the Office of 

Engineering and Technology, at 

Nicholas.Oros@fcc.gov or 202–418– 

0636. 

SUPPLEMENTARY INFORMATION: 

Correction 

In FR Doc. 2023–28620 in the Federal 

Register of February 26, 2024, the 

following correction is made: On page 

14016 in the first column and first 

sentence in ADDRESSES of the preamble, 

‘‘ET Docket No. 13–115 and RM–11341’’ 

is corrected to read ‘‘ET Docket No. 18– 

295 and GN Docket No. 17–183’’. 

Federal Communications Commission. 

Marlene Dortch, 

Secretary. 

[FR Doc. 2024–04494 Filed 3–1–24; 8:45 am] 

BILLING CODE 6712–01–P 


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