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As part of the post-grant proceedings created in 2012 by the America Invents Act, a Patent Owner can choose to file a motion to amend its patent when that patent is challenged. See 35 U.S.C. § 316(d) (“Amendment of the patent.”); 37 CFR § 42.121 (“Amendment of the patent.”). For example, a Patent Owner may file a contingent motion to amend in lieu of filing a Patent Owner Response after institution of an inter partes review, cancelling the original, challenged claims. Or, the Patent Owner may file a noncontingent motion to amend with its Patent Owner Response, which allows the Patent Owner to argue that both the proposed and the original claims are patentable. However, the Petitioner in an instituted review can challenge the patentability of any proposed amended claims, arguing, for example, that the claims were anticipated by the prior art, or would have been obvious, or fail the requirements of 35 U.S.C. § 112. See Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1315 (Fed. Cir. 2017).

After several years of experience with post-grant proceedings involving motions to amend, the PTAB studied various aspects of the practice surrounding these motions. The PTAB then proposed two major changes to the motion to amend process, and implemented them in March 2019 in a Motion to Amend Pilot Program. The PTAB’s changes provided:

  1. A Patent Owner can request “preliminary guidance” from the PTAB regarding the patentability of proposed amended claims, when filing a motion to amend; and
  2. A Patent Owner can file a revised motion to amend regardless of whether the Patent Owner requests preliminary guidance.

Now, Tyler Bowen and Katherine Nesler, Ph.D., have published a short research paper entitled The Impact of the PTAB’s Motion to Amend Pilot Program [PDF], examining how the Pilot Program affected motion to amend practice. Tyler and Katherine’s research identified proceedings that involved a motion to amend, among the nearly 5,000 trials completed by March 31, 2020, and characterized and compared the outcomes of motions filed before versus after the Pilot Program began. In their paper, Tyler and Katherine identify trends in the data and provide practical tips, for both Patent Owners and Petitioners, regarding the motion to amend process.

We encourage you to download the paper, and hope you find the authors’ insights informative and helpful.