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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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