Monday, August 13, 2018

USPTO - PTAB Study on Motions to Amend in AIA Trials

In recent years it has been very challenging for a patent owner to amend claims during an America Invents Act (AIA) trial. The USPTO published a study that suggests this is still the case. Here's the results from a PTAB Motion Study that tracks and analyzes motions to amend filed in AIA trials up to the end of March 2018:
  • "Of the 3,203 trials that have gone to completion or settled, patent owners sought to amend the claims in 305 trials.
  • Of the 305 trials with motions to amend, the PTAB ultimately decided the merits of the motions in 189 trials. In the remaining 116 completed trials, the motions to amend were rendered moot because the PTAB did not find the original claims unpatentable, were not decided because the trial terminated prior to a final written decision, or were an amendment that only sought to cancel claims.
  • Of the 189 motions to amend that the PTAB decided, the PTAB granted or granted-in-part 18 motions. For 160 of the 182 motions denied or denied-in-part, the PTAB determined that proposed amended claims did not satisfy at least one statutory requirement of patentability akin to an examiner rejecting a proposed amended claim because it is anticipated, obvious, not adequately described in the written description, indefinite, or directed to non-statutory subject matter or found that the patent owner failed to satisfy the statutory requirements for a motion to amend under 35 U.S.C. 316(d). For the remaining 22 motions, the PTAB denied on procedural grounds related to the regulatory requirements for a motion to amend.
  • As of the midpoint of FY 2018, patent owners had filed more motions to amend than in recent fiscal years."
For more details see the Motion to Amend Study Update under the PTAB Statistics.

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