PTAB Motion to Amend: The Pilot Is Now Permanent

See the primary source.

The USPTO's final rule on motion-to-amend practice, cited as 89 FR 76421, is effective October 18, 2024. It makes permanent certain provisions of the Office's motion-to-amend pilot program, gives a patent owner the option of preliminary guidance in response to a motion to amend and the option of filing one additional revised motion to amend, and revises how burdens of persuasion are allocated in those motions. The rule governs procedure in the trial; it does not change the patentability standard applied to the substitute claims.

What is in force now?

The live obligation is the October 18, 2024 effective date. The Commerce Department published the rule on September 18, 2024. A trial team that still treats preliminary guidance or a revised motion to amend as a pilot-only option is running a superseded procedure.

The sealed citation is 89 FR 76421, the RIN is 0651-AD50, and the text amends 37 CFR Part 42. Those are the identifiers to put on the AIA-trial checklist.

The citations on this page sit inside a sealed index covering 1086 rules from 11 agencies, all published September 1, 2023 – September 1, 2026. That window is a closed snapshot, not a rolling PTAB docket.

These rules relate to Office trial practice for inter partes review, post-grant review, and derivation proceedings that implemented the AIA provisions for trials before the Office, as the notice states. A district-court claim-amendment practice, or an ex parte reexamination amendment, is not what this document rewrites.

Source: Federal Register / eCFR.

Who has to comply?

The rule binds the parties and the Board in AIA trial proceedings when a patent owner files a motion to amend. Patent-side counsel running or defending an IPR, PGR, or derivation are the readers who have to change the playbook.

A patent owner now has, as a standing rule rather than a pilot courtesy, the option of issuance of preliminary guidance in response to a motion to amend and the option of filing one additional revised motion to amend, per 89 FR 76421. Those are options. The rule does not say that every patent owner must request guidance or must file a revised motion.

Petitioner counsel is on the other side of the same schedule. Once a patent owner uses the preliminary-guidance option or files a revised motion to amend, the petitioner's opposition, evidence, and burden arguments run against the revised allocation in 37 CFR Part 42, not against a memo from the pilot years.

The Board is bound as well. The rules clarify that a preponderance of evidence standard applies to any new ground of unpatentability raised by the Board, and that when exercising the discretion to grant or deny a motion to amend or to raise a new ground of unpatentability, the Board may consider all evidence of record in the proceeding.

The Board may also consider information identified in response to a Board-initiated request for examination assistance, and the results of that assistance will be added to the record, as the same notice states. A trial team that assumes the record is closed to examiner assistance is reading a superseded procedure.

Law firms that docket AIA trials in PTAB E2E, the USPTO's electronic filing system for Board proceedings, and that keep the patent family in Anaqua, an intellectual-property management system used to docket patents and related deadlines, are the shops this page is written for. PTAB E2E is where the motion, the request for preliminary guidance, and the revised motion actually go on file. Anaqua is where the firm's own deadline and claim-set record usually lives. Neither system decides patentability of substitute claims.

What does the rule require?

The USPTO modifies its rules of practice governing amendment practice in trial proceedings under the Leahy-Smith America Invents Act to make permanent certain provisions of the Office's motion to amend pilot program and to revise the rules that allocate burdens of persuasion in connection with motions to amend, per 89 FR 76421.

"Certain provisions" is the phrase to keep. The rule does not say that every feature of the pilot was made permanent. What it does name is the option of issuance of preliminary guidance in response to a motion to amend, and the option of filing one additional revised motion to amend.

The burden revision is separate from those options. The rules clarify that a preponderance of evidence standard applies to any new ground of unpatentability raised by the Board. They further provide that when the Board exercises discretion to grant or deny a motion to amend or to raise a new ground of unpatentability, the Board may consider all evidence of record in the proceeding.

Examination assistance is now a named path. The Board may consider information identified in response to a Board-initiated request for examination assistance, and the results of that assistance will be added to the record, according to the Federal Register notice. The rule does not say a day-count for that request, and it does not say a page limit for the motion. Those figures, if a firm needs them, are not in this sealed set.

The limitation that belongs on every internal memo is this: the rule governs procedure in the trial. It does not change the patentability standard applied to the substitute claims. A substitute claim still has to be patentable. Preliminary guidance and a revised motion change how the parties and the Board get to that question. They do not lower the question.

The notice states that the 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. That is the Office's stated purpose. It is not a promise about any one trial's outcome.

Current text is in 37 CFR Part 42. A playbook that still cites only the pilot Federal Register notice as if the pilot were optional and temporary is out of date as of October 18, 2024.

Where do law firms commonly fall short?

The shortfalls are docket and playbook shortfalls. This section does not invent Board reversal rates or a count of denied motions.

The first miss is leaving the motion-to-amend section of the trial checklist labeled "pilot." The rule made certain pilot provisions permanent as of October 18, 2024. A template that still tells the team to "check whether the pilot applies to this proceeding" sends people looking for a gate that is no longer there.

The second miss is treating preliminary guidance as automatic. It is an option the patent owner may request. A firm that waits for the Board to issue guidance without a request, or that tells the client guidance always arrives, is describing a process the rule does not write.

The third miss is assuming a second revised motion is available. The option is one additional revised motion to amend. The rule does not say a third try.

The fourth miss is arguing burden as if the Board could not raise a new ground, or as if a new ground the Board raises were tested on something other than a preponderance of the evidence. The allocation is in the rule. A brief that ignores it is a brief written to the old chart.

The fifth miss is a closed-record assumption. The Board may consider all evidence of record when exercising discretion to grant or deny a motion to amend or to raise a new ground, and it may consider information from a Board-initiated request for examination assistance, with those results added to the record, per 89 FR 76421. A team that stops collecting substitute-claim evidence after the first motion files is not tracking that path.

The sixth miss is confusing procedure with the patentability standard. Preliminary guidance is not a patentability ruling that the substitute claims are safe. The rule does not change the patentability standard applied to those claims.

The seventh miss is a docket split between PTAB E2E and Anaqua. If the request for preliminary guidance is on file in PTAB E2E but the Anaqua matter still shows only the original motion-to-amend deadline, the revised-motion option will be missed on the firm's own calendar even though it is live at the Board.

What self-audit can a firm run now?

The effective date is already past. The audit is against open AIA trials, not against a future start date.

Numbered operating steps a reviewer can quote:

1. Inventory every open IPR, PGR, and derivation in which a motion to amend is filed or is reasonably on the table.

2. Replace every "pilot" label on the motion-to-amend checklist with 89 FR 76421, RIN 0651-AD50, effective October 18, 2024.

3. For each patent-owner matter, record a human decision: request preliminary guidance, or do not.

4. Docket one additional revised motion to amend as an option, not as an unlimited series.

5. Rewrite the burden paragraph so that a new ground of unpatentability raised by the Board is addressed under a preponderance of the evidence, matching the rule.

6. Add a line to the evidence plan that the Board may consider all evidence of record and may add examination-assistance results to the record.

7. File in PTAB E2E and mirror the same deadlines in Anaqua so the firm's docket and the Board's docket do not diverge.

8. Keep the patentability standard for substitute claims in the human column. Procedure can be flagged. Patentability cannot be automated.

Steps 1, 2, 4, and 7 can be listed and routed. Steps 3, 5, 6, and 8 need the responsible attorney.

How does a firm operationalize this at volume?

Reconcile the matter docket against the change: each open matter maps to the filing, appearance, or fee the rule now requires and its due date. US Tech Automations flags matters still running on the superseded procedure and routes the correction to the responsible attorney.

That is the claim. Flag the trial still labeled "pilot." Route it. Do not draft the substitute claims, do not request guidance without an attorney decision, and do not call the result compliant.

PTAB E2E is where the motion to amend, the request for preliminary guidance, and the revised motion are actually submitted to the Board. Anaqua is where the firm stores the patent family, the claim-set versions, and the internal deadlines. The operational failure is almost always a mismatch between those two systems, not a misunderstanding of 37 CFR Part 42.

US Tech Automations is the homepage for the flag-and-route layer that sits next to that docket. It does not replace PTAB E2E, and it does not replace Anaqua.

Firms already running matter-level deadline work can keep this rule on the same shelf as statute-of-limitations tracking per matter, law firm client intake automation, and legal brief drafting workflows. Intake and conflict process of the kind in tackling inefficient client intake in law firms is a different problem; this page is only the AIA motion-to-amend procedure.

What can be automated is the inventory of open IPR, PGR, and derivation matters, the "pilot" label on old templates, and the missing revised-motion deadline. What needs a human is the request for preliminary guidance, the substitute-claim set, the burden argument, and the patentability call.

Key Takeaways

• 89 FR 76421, RIN 0651-AD50, is effective October 18, 2024 and amends 37 CFR Part 42.

• Certain motion-to-amend pilot provisions are now permanent, including the option of preliminary guidance and the option of one additional revised motion to amend.

• A preponderance of the evidence applies to any new ground of unpatentability raised by the Board; the Board may consider all evidence of record and examination-assistance results added to the record.

• The rule governs trial procedure. It does not change the patentability standard applied to substitute claims.

• PTAB E2E and Anaqua both need the new options on the docket; a flag-and-route layer can catch a superseded playbook, not the claim set.

What questions do AIA trial teams still ask?

When did the motion-to-amend rule take effect?

This rule is effective October 18, 2024. It was published on September 18, 2024.

Is the motion-to-amend pilot still a pilot?

The rule makes permanent certain provisions of the Office's motion to amend pilot program. It does not say that every pilot feature survived.

What options does a patent owner have after filing a motion to amend?

A patent owner has the option of issuance of preliminary guidance in response to the motion, and the option of filing one additional revised motion to amend, per 89 FR 76421.

Where does the burden sit on a new ground the Board raises?

The rules clarify that a preponderance of evidence standard applies to any new ground of unpatentability raised by the Board, according to the notice.

Did the patentability standard for substitute claims change?

No. The rule governs procedure in the trial. It does not change the patentability standard applied to the substitute claims.

Which proceedings does this cover?

The rules relate to Office trial practice for inter partes review, post-grant review, and derivation proceedings, as stated in 89 FR 76421.

Does the sealed set state a filing-day count or a fee?

The rule does not say a day-count or a fee figure in this sealed fact set.

This page is for informational purposes only. It is not legal or tax advice and does not create an attorney-client relationship. Read the rule and consult a qualified professional before taking a position in a trial.

Every date, citation, RIN, CFR reference, and figure in these posts is copied verbatim from the Federal Register and eCFR as of the snapshot date. Nothing is estimated, modeled, or extrapolated. This is not legal or tax advice.

Source: Federal Register / eCFR — 89 FR 76421, Rules Governing Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board.

Last reviewed: September 18, 2024

The exception path is the agentic workflow layer.