By Emmanuel Oluebube
The Patent Trial and Appeal Board (PTAB) has published the sixth installment of its Motion to Amend Study which tracks and analyzes all motions to amend filed in America Invents Act trials, including pilot motions, through the end of March 2020.
This installment completes the data on all motions to amend filed before the effective date of the New Pilot Programme Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board (84 FR 9497).
Highlights from the installment include:
Some limited data on motions to amend filed under the motion to amend pilot programme that the office implemented for cases instituted on or after March 15, 2019.
Of the 5,359 trials that have gone to completion or settled, patent owners sought to amend the claims in 562 trials—504 pre-pilot programme trials and 58 pilot programme trials.
Of the 504 trials with pre-pilot motions to amend, the PTAB decided the merits of 335 motions. In the remaining 170 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 contained an amendment that only sought to cancel claims.
Of the 335 pre-pilot motions to amend that the PTAB decided, the PTAB granted or granted-in-part 46 motions. For 92 per cent of the 289 motions denied or denied-in-part, the PTAB determined that the 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) or 326(d).
For the limited number of motions to amend filed under the pilot programme and included in the study, patent owners requested preliminary guidance in 83 per cent of motions and filed a revised motion to amend in 58 per cent of trials after receiving preliminary guidance (when taking into account cases that terminated, cases in which the motion to amend was withdrawn, or cases in which the deadline to file a revised motion to amend had not yet passed).
