USPTO Provides Analysis on the Impact of the PTAB’s Motion to Amend Pilot Program

The USPTO recently issued comments concerning the impact of the PTAB’s motion to amend (“MTA”) pilot program on AIA trials.

The PTAB’s MTA pilot program was implemented in March of 2019.  The pilot program provides a patent owner with two options.  First, the patent owner can request preliminary guidance from the Board on its MTA.  Second, the patent owner may file a revised MTA in response to the preliminary guidance received from the Board or, if the patent owner does not request preliminary guidance, the patent owner may file a revised MTA in response to the petitioner’s opposition to the original MTA.

The USPTO reports that between June 1, 2019 and September 30, 2020, patent owners requested preliminary guidance in 76% of MTAs (78 out of 102 MTAs).  Thereafter, 79% of patent owners filed a revised MTA. 

From April 1, 2020 through September 30, 2020, the PTAB issued 31 final written decisions addressing pilot-eligible MTAs.  Out of the 31 final written decisions, the patent owner in 22 of the cases elected at least one of the pilot program options. Out of the 22 MTAs in which patent owners elected at least one pilot program option, 36% had at least one proposed substitute claim granted in the final written decision.  By contrast, of the nine MTAs where patent owners did not elect either pilot program option only 11% had at least one proposed substitute claim granted.

The USPTO also reports that before the pilot program, only about 14% of MTAs had at least one proposed substitute claim granted. 

While the sample size is limited, the early indication is that the MTA pilot program may provide patent owners with better odds at obtaining a substitute claim in comparison with pre-pilot program procedure.

Patent owners may face an uphill battle at the PTAB once an IPR is instituted.  Nearly two-thirds of final written decisions rendered by the PTAB result in all of the challenged claims being determined to be unpatentable.  Patent owners may wish to consider how an MTA might fit into the overall IPR and litigation strategy particularly in view of the impact of the pilot program and emerging trends.

The USPTO’s comments can be viewed here.