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Monday May 09, 2016

Further Insight Provided on PTAB Amendment Motions with New Study

Guest Blog by Acting Chief Administrative Patent Judge Nathan Kelley

Regular readers of our blog know of the USPTO’s commitment to seek feedback on how we can improve our programs, procedures, and services to best serve American innovators. We value and rely on your input to help us do our job at the USPTO, and we are always open to ideas for improvement within our statutory mandate.

One topic that comes up frequently, especially recently, is our Patent Trial and Appeal Board (PTAB) trials, particularly regarding motions to amend claims. We’ve heard concerns that, while the America Invents Act (AIA) gives patent owners the right to file a motion to amend its claims during a trial, few such motions have been granted as compared to the number of total petitions filed. Given the degree of public interest on this topic, and to provide greater transparency into our practices, we wanted to aid the ongoing dialogue by providing current aggregated data on PTAB amendment motions.

Here are some highlights from our study (based on data current through April 30, 2016):

  • In the 1539 trials that have gone to completion or settled (where joined or consolidated trials were counted as a single trial), motions to amend were sought in 192. (34 more motions to amend are pending in currently open cases.)
  • Of those 192, not all ultimately required the PTAB to pass on the merits of the motion. This is because, often, motions to amend are filed as “contingent” motions—if the PTAB upholds the patentability of the original claims, such motions never get decided. Several other cases settle before motions to amend are decided. Additionally, some motions to “amend” only request the cancellation of claims, and those are routinely granted.

This leaves 118 motions to amend (out of the 192) that a PTAB panel has had a chance to review. Of these, the PTAB granted or granted-in-part 6.  Of those denied, including the denial portion of those granted-in-part,  22 were denied solely on procedural grounds (only one of which was that the patent owner failed to state that the substitute claims were patentable over the prior art “in general”), and 94 were denied after identifying specific grounds of patentability that the proposed amended claims did not satisfy. To use conventional prosecution as a comparison, this latter category is like an examiner rejecting an amended claim because it is anticipated, obvious, not described, etc. But unlike in the examination context, the PTAB proceedings must be completed within a year, and there is no time for the back-and-forth between the applicant and the USPTO that happens during prosecution. Instead, the PTAB acts as the final arbiter of these newly proposed claims based solely on the briefing presented to it by the parties—if the PTAB grants such a motion, the new claims will issue (and be enforceable against the public) without any examination to ensure compliance with the statutory requirements for patentability. A disappointed patent owner who believes the PTAB erred in refusing to allow a claim amendment can, of course, seek review from the Federal Circuit.

Finally, although we sometimes hear that motions to amend are no longer being filed because parties think they’re futile, we are currently on track to have about 50 motions filed this year, which is consistent with the level they were filed in 2013 and 2015.

I encourage you to read the Motion to Amend Study for yourself, and continue to engage with us on this topic and any others of interest to you.


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