Amendment Pilot

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Roughly 10% of AIA Proceedings Involve Amendments

Earlier this week the Patent Trial & Appeal Board (PTAB) released the sixth installment of its Motion to Amend Study. The study tracks and analyzes all motions to amend filed in America Invents Act trials, including pilot motions, through the end of March 2020.  Not surprisingly, this installment doesn’t look much different than previous ones.  Amendment remains unpopular at the Board for strategic reasons, and those Patent Owners that do attempt amendment are rarely successful.

While the 6th installment preview early results on the Amendment Pilot, it does not present success rates (which to date, are no better then the old program – also, not a surprise). While there was an initial flurry of Patent Owners opting for the Pilot program, that initial amendment popularity has waned.
Continue Reading PTAB Amendment Study Shows More of the Same

Public Policy Disfavors the Issuance of Unexamined Patent Claims

Last November, the PTAB ordered Precedential Opinion Panel (POP) review of the final written decision in  Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, Inc., IPR2018-00600. The rehearing request in Hunting sought review of the Board’s denial of a Motion to Amend based upon an alleged sua sponte modification of a petitioner’s anticipation ground by the panel (here).  That is, the POP is reviewing the Board’s role in the amendment process where a petitioner either decides not to challenge an amended claim, or does so in a deficient manner that is apparent to the expert agency.

Does the PTO owe a duty to the public from issuing amended claims that have not been adequately examined/reviewed for patentability?
Continue Reading The PTAB’s Important Role in the Policing of Amended Patent Claims

Boardside Chat This Wednesday

This Wednesday, April 10, from noon to 1 p.m. ET, the Patent Trial & Appeal Board (PTAB) is hosting a Boardside Chat webinar about the new pilot program for motions to amend in AIA trials. Deputy Chief Judge Jackie Bonilla and Lead Judge Jessica Kaiser will present.

The new Pilot program…