One of the criticisms leveled at the post-issuance reviews procedures is that while the USPTO’s Patent Trial and Appeal Board has been only too happy to invalidate patents in a review, patent owners are given little opportunity to amend the claims under threat. To some this is particularly egregious because of the broadest reasonable interpretation standard that the PTAB uses to evaluate claims and has led many patent owners to complain of punishing invalidity rates.
Last year former USPTO head Todd Dickinson and Andrew Baluch of George Washington University and the law firm Strain PLLC, wrote a post for this blog with a proposal for how the amendment process could be changed to alleviate some of the concerns of patent owners. Here’s how the pair summed up a view held by many on the Patent Bar: “The supposed “opportunity” to amend claims in IPRs is seen by patent owners as illusory, with the reasons for denying motions either over technical or procedurally suspect.” At the time of writing just three substantive claim amendments had been allowed. The issue of has even cropped up in the patent reform debate with Senator Coons’ STRONG Patents Act proposing changes to make it easier to tinker with claims.
The USPTO is obviously not deaf to those concerns and recently published an analysis of the motions to amend (MTA) that have been filed since the new reviews came into effect in 2012. You can see the study here and a corresponding blog post from the Acting Chief Judge of the PTAB here.
The study found that MTAs had been sought in 192 of the 1539 PTAB trials that had gone to completion as at the end of April. Once those trials where the patentability of the claims had been upheld had been taken out (i.e. there was no need to amend the claims in question) the dataset had been whittled down to 118 motions. Of those the PTAB granted or granted-in-part just 6 motions to amend. Of those that were denied, 22 were denied on procedural grounds and 94 on grounds of patentability.
So, in short, it’s remains very hard to amend a claim but then it is clearly the PTAB’s view that the bar should be high. It is not, after all, a judge’s job to don the hat of an examiner and evaluate new claims as would happen in an examination. That said, the Court of Appeals for the Federal Circuit (CAFC) has had its say in a number of cases, including Nike v Adidas earlier this year, making a number of tweaks in favour of the patent owner.
What is perhaps most interesting about the study is that it shows how the number of motions to amend has fluctuated. In 2013 and 2015 around 50 were filed but they spiked in 2014 with 92 after which patent owners clearly got the message that their chances were not particularly good. This is a mistake according to one PTAB practitioner I spoke to who insisted that some patent owners were mistakenly not filing motions to amend having been put off by the low rate of success.
It’s fair to say that the PTO wins praise for publishing this analysis, adding a level of granularity behind the very low rate of amendments. But for some the question remains of to what extent the amendment process is divorced from the reality facing many patent owners? For them the prospect of a post-issuance review remains daunting even though the rate of invalidation has dropped from its highs of a couple of years ago.
Of course proponents of the system would argue that the PTAB is playing its role in improving patent quality but many would still insist that patent owners should be given a more effective mechanism in which to make changes to their filings. “It’s clearly not working as intended – 99.8% of patent attorneys cannot be so incapable as to fail as spectacularly as they have,” insisted one PTAB specialist.