The PTAB has published the fifth installment of its Motion to Amend Study, which tracks and analyzes all motions to amend filed in AIA trials through the end of September 2018. Highlights from the installment include: - Of the 3,599 trials that have gone to completion or settled, patent owners sought to amend the claims in 326 trials.
- Of the 326 trials with motions to amend, the PTAB ultimately decided the merits of the motions in 205 trials. In the remaining 121 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 were an amendment that only sought to cancel claims.
- Of the 205 motions to amend that the PTAB decided, the PTAB granted or granted-in-part 21 motions. For 175 of the 197 motions denied or denied-in-part, the PTAB determined that that 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).
- In FY 2018, patent owners filed more motions to amend than in any other fiscal year.
For more details, please check out the Motion to Amend Study Update under the PTAB Statistics page of the USPTO website. |