Patent Owners Largely Ignore Ex Parte Amendment Options
A few weeks back the USPTO issued a Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding (here). The Notice provided no new information, instead, it served to remind the public that reissue/reexamination options exist to amend claims outside of AIA trials. Given the continuous public outcry over AIA amendment difficulties, one would expect a fairly robust jump in reexam/reissue filing rates—especially as these options provide an ex parte amendment process.
However, as recent Patent Trial & Appeal PTAB statistics show, very few Patent Owners are pursuing these traditional amendment paths.
While an ex parte amendment path is more appealing than amending mid-AIA trial, amendment is not a realistic option for the vast majority of patent owners. Whether approaching patent expiration, wary of creating an intervening rights defense for a parallel litigation, or claiming transient technology, a change in claim scope is simply not feasible in many AIA trials. Still, critics of the PTAB argue that the lack of amending there has to more do with the low success rates. But, if amending were so important to patent owners, such would be reflected in the reexamination/reissue filing rates.
The next time this debate is presented to Congress, the below statistics will surely be cited.
Looking only at reissue (as the reexamination numbers are tainted by third party challenges), the trend is the absolute opposite of what one would expect if amendment were as important to Patent Owners as argued.
As to the timing of the few reissue filings that have been made (pie chart below), most have been pursued early on in the AIA trial process. And, early on in the history of AIA trial proceedings when more significant remodeling amendments were encouraged to go that route. Idle Free Systems Inc., v Bergstrom Inc. (IPR2012-00027).
While amending via reexamination/reissue does have some added complications with the trial estoppel of 37 C.F.R. § 42.73(d)(iii), one would still expect these numbers to be far more pronounced if amendment were as much of a critical interest as it is argued.
Of course, when it comes to reexamination/reissue, the best practice for Patent Owners is to leverage these options before assertion. This allows refinement and expansion of claim sets, adding of narrower claims, etc. for those patents that were prosecuted before the PTAB became the first hurdle to monetization.