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