In response to claims by patent owners that the Patent Trial and Appeal Board ("PTAB") has raised the bar too high to amend claims of a patent in response to validity challenges under the America Invents Act ("AIA"), the United States Patent and Trademark Office ("USPTO") conducted a detailed study of all motions to amend in post-grant proceedings to date. The USPTO found that of 4,850 total petitions filed, 1,539 have resulted in completed trials and 743 have trials pending. Of those 1,539 completed trials, a patent owner has filed a motion to amend in 192 of the completed trials. Of those 743 cases that are still pending trial, a patent owner has filed a motion to amend in 34 instances. Accordingly, of the 2,282 total instances in which the PTAB instituted trial in an AIA challenge, a motion to amend has only been filed in approximately 10% of the cases. The data establishes that Patent owners are not attempting to amend their claims very often.
Further data provided by the USPTO may suggest why. Of the 192 motions to amend in trials already completed, the PTAB has rendered a substantive decision on the motion to amend in 118 cases. The other cases settled before a decision on the motion or just involved the cancellation of claims, not the amendment of claims. Of the 118 cases involving a PTAB ruling, 2 of the motions to amend were granted in full, 4 were granted in part, and 112 were denied. In sum, only approximately 5% of all motions to amend have been at least partially successful and led to the issuance of at least one new amended claim. It is also worth noting that of the 6 motions that were granted at least in part, most of those successful motions have been adjudicated in the last year or two.
The USPTO's study suggests that it is still difficult to amend claims during post-grant proceedings, and that it is not a tool frequently used by patent owners. However, the PTAB is still encouraging patent owners to file motions to amend, possibly suggesting that the PTAB judges will start to be more receptive to motions to amend and that we may see an uptick in the success rates of these motions in the near future.
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