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TAKEAWAY: The PTAB’s pilot program for providing non-binding guidance in response to motions to amend may afford parties useful feedback on amendments and arguments.

The Patent Trial and Appeal Board entered its first ever early feedback to proposed claim amendments in AIA proceedings, on October 16, 2019. The feedback is part of a pilot program instituted by the USPTO in March of 2019, intended to provide a patent owner with the option to receive preliminary guidance from the Board upon filing a motion to amend.

The motions to amend in this case were brought by patent owner Sanofi-Aventis Deutschland GMBH, in inter partes reviews IPR2018-01679, IPR2018-01680, and IPR2018-01682, and were opposed by petitioner Mylan Pharmaceuticals Inc. In several paragraphs dedicated to each motion at issue, the Board concluded that, based on the current record, the patent owner had shown a reasonable likelihood that it had met the statutory and regulatory requirements of a motion to amend, but that the petitioner (or record) had shown a reasonable likelihood that the proposed amendments are unpatentable. Following this guidance, Sanofi will have the option to submit a revised motion to amend, and if it does so, Mylan will be provided the opportunity to respond.

In some cases, the opportunity to revise a motion to amend and a response, after receiving non-binding guidance from the Board, may be a welcome opportunity to gauge the Board’s reception of claim amendments and arguments, before honing them to address particular concerns highlighted by the Board. While the patent owner in particular has the advantage of being able to request the early feedback, either party may be able to improve its case or make better strategic determinations based on the substance of the feedback received.