Vast Majority of Amendments Denied on the Merits

Yesterday the Patent Trial & Appeal Board (PTAB) released a study on motions to amend. Contrary to popular belief, the majority of these motions are not denied on strict procedural grounds, but instead, on the merits.

The study points out that:

  • In the 1539 trials that have gone to completion or settled (where joined or consolidated trials were counted as a single trial), motions to amend were sought in a little over 10% of cases, 192 in all. (34 more motions to amend are pending in currently open cases.)
  • Of those 192, not all ultimately required the PTAB to pass on the merits of the motion. This is because, often, motions to amend are filed as “contingent” motions—if the PTAB upholds the patentability of the original claims, such motions never get decided. Several other cases settle before motions to amend are decided. Additionally, some motions to “amend” only request the cancellation of claims, and those are routinely granted.  
  • 94 of the 118 remaining petitions were denied on merit based deficiencies, only 22 were bounced on procedural grounds.

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As shown above, 50% of MTAs are denied on the merits (101,112, 102, 103). Another 23% include multiple statutory grounds, which also include merit based deficiencies.  

As inconvenient as these statistics are for PTAB opponents, they are far from surprising. 

Plainly the lack of a large number of successful amendments to date is not rooted in any reluctance of the agency to accept amendments, but instead, a reflection of the impossibility of saving low quality patents with trivial amendments that lack technical distinction. Typically, patentees are constrained by the fear of intervening rights from proposing more substantial, technically significant amendments. The fear of intervening rights is especially prevalent in arts where licensing entities are the most active, such as consumer electronics. In such quickly developing technologies, an amendment may not only give up past damages, but foreclose future damages if the technology has already advanced beyond the patented device or methodology.