Federal Register / Vol. 89, No. 180 / Tuesday, September 17, 2024 / Notices 76091 

the FOR FURTHER INFORMATION CONTACT

section of this Notice for special 

instructions. 

FOR FURTHER INFORMATION CONTACT: 

Carolyn Kosowski, Senior Legal 

Advisor, at 571–272–7688; Nalini 

Mummalaneni, Senior Legal Advisor, at 

571–270–1647; or Matthew Sked, Senior 

Legal Advisor, at 571–272–7627, all 

with the Office of Patent Legal 

Administration, Office of the Deputy 

Commissioner for Patents. 

SUPPLEMENTARY INFORMATION: On July 

17, 2024, the USPTO published a notice 

on patent subject matter eligibility titled 

‘‘2024 Guidance Update on Patent 

Subject Matter Eligibility, Including on 

Artificial Intelligence’’ to address 

innovation in critical and emerging 

technologies, especially artificial 

intelligence. See 89 FR 58128. 

The USPTO is extending the written 

comment period until October 16, 2024, 

to ensure that all stakeholders have a 

sufficient opportunity to submit 

comments on the examination guidance 

presented in the July 17, 2024, notice. 

The USPTO is extending the written 

comment period only once. 

Katherine K. Vidal, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2024–21085 Filed 9–16–24; 8:45 am] 

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DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

[Docket No.: PTO–P–2021–0042] 

Extension of the Patent Trial and 

Appeal Board Motion To Amend Pilot 

Program 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Notice. 

SUMMARY: The United States Patent and 

Trademark Office (USPTO) is extending 

the Motion to Amend (MTA) pilot 

program, initiated on March 15, 2019, 

and previously extended up to 

September 16, 2024. The MTA pilot 

program provides additional options for 

a patent owner who files an MTA before 

the Patent Trial and Appeal Board 

(PTAB). In particular, the MTA pilot 

program provides a patent owner who 

files an MTA with options to request 

preliminary guidance from the PTAB on 

the MTA and to file a revised MTA. The 

MTA pilot program also provides 

timelines for briefing to accommodate 

these options. 

DATES: Applicable Date: September 17, 

2024. Duration: The MTA pilot program 

will run until March 31, 2025, or earlier 

if replaced by a permanent program 

after notice-and-comment rulemaking. 

The USPTO may extend the MTA pilot 

program (with or without modification) 

on either a temporary or a permanent 

basis or may discontinue the MTA pilot 

program, after that date. 

FOR FURTHER INFORMATION CONTACT: 

Miriam L. Quinn, Acting Vice Chief 

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: A patent 

owner in an America Invents Act (AIA) 

trial proceeding may file an MTA as a 

matter of right. See 35 U.S.C. 316(d)(1), 

326(d)(1). After receiving public 

feedback about the PTAB’s MTA 

practice, including some concerns 

regarding the low grant rate of claim 

amendments in AIA trial proceedings, 

in October 2018, the USPTO published 

a Request for Comments in the Federal 

Register seeking written public 

comments on a proposed amendment 

process in AIA trials that would involve 

preliminary guidance from the PTAB on 

the merits of an MTA and an 

opportunity for a patent owner to file a 

revised MTA. Request for Comments on 

MTA Practice and Procedures in Trial 

Proceedings Under the America Invents 

Act Before the Patent Trial and Appeal 

Board, 83 FR 54319 (Oct. 29, 2018). The 

majority of comments supported the 

PTAB issuing preliminary guidance in 

cases involving an MTA and 

commenters were almost evenly mixed 

in supporting or opposing the 

opportunity for a patent owner to file a 

revised MTA. 

On March 15, 2019, in response to 

these public comments, the USPTO 

issued a Notice detailing the MTA pilot 

program. 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 FR 9,497 (Mar. 15, 2019). The 

MTA pilot program provides a patent 

owner with two options not previously 

available: (1) a patent owner may choose 

to receive preliminary guidance from 

the PTAB on its MTA; and (2) a patent 

owner may choose to file a revised MTA 

after receiving petitioner’s opposition to 

the original MTA and/or the PTAB’s 

preliminary guidance (if requested). If a 

patent owner does not elect either 

option, then AIA trial practice, 

including MTA practice, is essentially 

unchanged from the practice prior to the 

MTA pilot program. 

The USPTO has extended the MTA 

pilot program twice. The first extension 

on September 16, 2021 ran through 

September 16, 2022, and the second 

extension currently runs until 

September 16, 2024. The USPTO 

continues to present results of the MTA 

pilot program yearly, with the most 

recent report based on data up through 

March 31, 2024, in Installment 9 of the 

Motions to Amend Study. The most 

recent information and statistics related 

to MTAs are available on the USPTO’s 

website at https://www.uspto.gov/ 

patents/ptab/motions-amend-study. 

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 USPTO issued a 

Request for Comments to seek feedback 

on the public’s experience with the 

program and the burden-allocation rules 

that apply to MTAs. See Request for 

Comments Regarding MTA Pilot 

Program and Rules of Practice to 

Allocate the 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). Then on March 4, 2024, 

after consideration of the received 

comments and based on the experience 

of the Board with the MTA pilot 

program, the USPTO published a Notice 

of Proposed Rulemaking concerning 

Motion to Amend Practice and 

Procedures in Trial Proceedings Under 

the America Invents Act Before the 

Patent Trial and Appeal Board. 89 FR 

15531 (‘‘2024 NPRM’’). The USPTO 

proposed 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 a revised MTA. While the 

USPTO finalizes rules in this regard, the 

USPTO is extending the MTA pilot 

program for a third time. The MTA pilot 

program is hereby extended through 

March 31, 2025. The requirements for 

the MTA pilot program remain as set 

forth in the original Notice without 

modification at this time. 

Katherine K. Vidal, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2024–21135 Filed 9–16–24; 8:45 am] 

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