PTAB grants 5% of motions to amend claims
The US Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB) has granted 5% of motions to amend claims since its inception nearly four years ago, new figures have revealed.
In data published by the PTAB, the board said it has granted, or granted-in-part, six requests to amend claims in 118 trials.
The figures, published yesterday, May 9, were in response to concerns about the lack of accepted motions to amend claims in all of the PTAB’s proceedings.
In a blog post, Nathan Kelley, chief administrative patent judge at the USPTO, said one topic that “comes up frequently, especially recently”, is PTAB trials, particularly regarding motions to amend claims.
“We’ve heard concerns that, while the America Invents Act gives patent owners the right to file a motion to amend claims during a trial, few such motions have been granted as compared to the number of total petitions filed,” Kelley said.
Since the PTAB’s inception in September 2012, 1,539 trials have been completed or settled and motions to amend claims were sought in 192 cases.
Not all motions were ultimately required, the PTAB said, as often motions to amend are filed as “contingent” motions—if the PTAB upholds the patentability of the original claims, those motions never get decided.
According to the PTAB, taking those cases out of the equation left 118 motions to amend that a panel had a chance to review. Of these, the PTAB granted or granted-in-part six motions.
Of those that were denied, 22 were denied solely on procedural grounds and 94 were denied after identifying specific grounds of patentability that the proposed amended claims did not satisfy.
Kelley added that: “A disappointed patent owner who believes the PTAB erred in refusing to allow a claim amendment can, of course, seek review from the US Court of Appeals for the Federal Circuit.”
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