PTAB Issues Fifth Installment Of Its Motion To Amend Study

By Emily Tait

On March 13, 2019, the PTAB issued the fifth installment of its ongoing Motion to Amend Study, which tracks and analyzes motions to amend filed in AIA trials through September 30, 2018 (end of Fiscal Year 2018).

The data collected by the Board includes: (1) the number of motions to amend filed in AIA trials, both as a cumulative total and by fiscal year; (1) subsequent developments of each motion to amend; (3) the number of motions to amend requesting to substitute claims that were granted, granted-in-part, denied-in-part, and denied; and (4) the reasons the Board provided for denying entry of substitute claims. The most recently collected data is summarized below.

Patent owners have filed a motion to amend in 326 of the 3,599 completed trials (9%), and in 90 of the 670 pending trials (13%)—a total of 416 motions to amend.

The Board decided a motion to amend requesting to substitute claims in 205 of the 326 completed trials (63%). In the remaining 121 completed trials (37%), the motion to amend: (a) requested solely to cancel claims (20 or 6%), (b) was rendered moot because the panel of judges found the original claims patentable or because the panel of judges already decided a motion to amend proposing the same substitute claims (36 or 11%), or (c) was not decided because the case terminated prior to a final written decision (64 or 20%).

In the 205 actual decisions on motions to amend, the Board granted or granted-in-part and denied-in-part a motion to amend in 21 of the 205 trials (10%) and denied a motion to amend in 184 of the 205 trials (90%).

The Board’s final written decisions identified at least one statutory ground of unpatentability or found that the patent owner failed to satisfy the statutory requirements for a motion to amend under 35 U.S.C. § 316(d) in 89% of trials or 175 trials. The Board’s decisions in most of those cases are 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. In the remaining 22 (11%) trials, the Board based a denial solely on procedural reasons related to the requirements for a motion to amend—these 22 trials are the same trials that the Board identified as procedural denials in the first installment of the Motion to Amend Study released in April 2016.

As previously reported, there has been an increase in the number of motions to amend filed in fiscal year 2018, when compared to other fiscal years. The number of motions to amend filed in fiscal year 2018 (114) exceeds the number of motions to amend filed in any other fiscal year, and is more than double the number filed in 2017 (50) and 2016 (56). In the third quarter of fiscal year 2018, more motions to amend were filed (38) than in any other quarter.

More information regarding the PTAB’s Motion to Amend Study can be found on the USPTO website. See https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/motions-amend-study.