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USPTO Produces Inter Partes Review Motion to Amend Study

Andrew B. Freistein
May 9, 2016

On May 9, 2016, in a guest post on the USPTO’s Director’s Forum Blog, Acting Chief Administrative Patent Judge Nathan Kelley reported the results a Patent Trial and Appeal Board Motion to Amend Study. The Study was prepared in reaction to concerns that, while the America Invents Act (AIA) gives patent owners the right to file a motion to amend its claims during a trial, few motions have been granted as compared to the number of total petitions filed.

The Study reviewed the 1539 instituted and completed inter partes review (IPR) trials as of April 30, 2016. The Study found that the Board decided the merits of a motion to amend in only 118 trials (or 8%) of the 1539 completed trials. Of those 118 trials, a motion to amend was granted or granted-in-part in 6 trials (5%) and denied in 112 trials (95%).

The Study breaks down the reasons for the denials in 116 trials (both complete denials and the denial portion of those granted-in-part) under (1) statutory grounds under 35 U.S.C. (94 trials, 81%) or (2) procedural grounds (22 trials, 19%).

The Director’s Forum Blog post can be found here:

The Motion to Amend Study can be found here: