The Patent Trial and Appeal Board (PTAB) has extended its Motion to Amend (MTA) Pilot Program until September 16, 2024, or earlier if replaced by a permanent program after notice-and-comment rulemaking. An extension notice will publish in the Federal Register soon. The program provides a patent owner who files an MTA with options to request preliminary guidance from the PTAB on the MTA and to file a revised MTA. The MTA Pilot Program also provides timelines for briefing to accommodate these options.

The PTAB has also published the seventh installment of its Motion to Amend Study, which tracks and analyzes all MTAs, including pre-pilot and pilot program MTAs, filed in America Invents Act (AIA) trials through the end of March 2022. This installment includes approximately three years of information on MTA Pilot Program results, from the start of the program on March 15, 2019, through March 31, 2022, and offers the most comprehensive data regarding the MTA Pilot Program to date:

• Of the 2,028 AIA trials conducted during the MTA Pilot Program (both completed trials and pending trials), patent owners sought to amend claims in 10% of them.
• Of the 155 AIA trials with an MTA completed during the pilot program, the PTAB decided the substantive merits of 99 MTAs. In the remaining 56 MTAs, the PTAB did not reach the substantive merits for various reasons explained in the study.
• Of the 99 pilot MTAs decided on the merits, 25% were granted or granted-in-part. By comparison, 14% of pre-pilot MTAs were granted or granted-in-part.
• Since the pilot began, when MTAs were denied, 58% of those denials were because the petitioner met its burden to show unpatentability, 16% of those denials were because the patent owner failed to meet statutory and/or regulatory requirements, and 27% of those denials were for both of the previous reasons.

The MTA pilot program is intended to provide a more efficient and effective opportunity for patent owners to preserve their patent rights by providing them feedback on their amended claims. Patent owners amend claims at a much lower rate in AIA trials than in ex parte review proceedings. The United States Patent and Trademark Office (USPTO) will continue to explore trends and seek stakeholder input.  

To that end, as a follow-up to the updated Motion to Amend Study, the USPTO intends to publish a request for comments seeking the public’s input on the MTA Pilot Program and to explore making the program or a revised version of the program final through notice and comment rulemaking.

For more details, please see the Motion to Amend Study Update (Installment 7) on the Motions to Amend Study page of the USPTO website.