Published on: 08/02/2023 14:18 PM
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Patent Trial and Appeal Board |
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PTAB updates Motion to Amend Study
The Patent Trial and Appeal Board (PTAB) has published the eighth installment of its Motion to Amend (MTA) Study, which tracks and analyzes all motions to amend, including pre-pilot and pilot program motions, filed in trial proceedings under the American Invents Act (AIA) through the end of March 2023. This installment includes approximately four years of information specific to the MTA pilot program results from the start of the pilot program on March 15, 2019 through March 31, 2023.
Highlights include:
- This installment provides the most comprehensive data regarding the pilot program to date, including additional information on MTA filings by technology.
- Of the 2,832 trials conducted during the pilot program (both completed trials and pending trials), patent owners sought to amend the claims in 264 trials.
- Of the 220 completed trials during the pilot program, the PTAB decided the substantive merits of 134 MTAs. In the remaining 71 MTAs, the PTAB did not reach the substantive merits for various reasons explained in the study.
- Of the 134 pilot MTAs decided on the merits, 24% had at least one claim granted substitution, as compared with 14% of pre-pilot MTAs having at least one claim granted substitution.
- Proposed substitute claims were denied 54% of the time because Petitioner met its burden to show unpatentability, 19% of the time because Patent Owner failed to meet the statutory and regulatory requirements, and 27% of the time for both reasons.
The Office published a request for comments seeking the public’s input on the pilot program, as well as the rules of practice to allocate the burdens of persuasion on MTAs. The comment period closed on July 24, 2023.
For more details, please check out the Motion to Amend Study Update (Installment 8), which is located on the PTAB Statistics page of the USPTO website.
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