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Carlos Ramos-Mrosovsky, Paul Levine Contribute Article to Transatlantic Law Journal

<img decoding="async" loading="lazy" class="alignright wp-image-5531" src="https://ipintelligencereport.bakerhostetlerblogs.com/wp-content/uploads/sites/11/2021/02/gavel-hand-close-up-judge-courtroom-GettyImages-1176175760-1200x630-72dpi-1.jpg" alt="" width="438" height="230">
The USPTO’s Motion to Amend (MTA) Pilot Program has been in effect for nearly two years. The Pilot Program applies to all AIA trials instituted on or after March 15, 2019. Broadly, the Pilot Program’s objective is to provide patent owners with the additional options of requesting Preliminary Guidance from the Patent Trial and Appeal Board (PTAB) on its MTA, and of filing a revised MTA (rMTA) in response to requested Preliminary Guidance or to a petitioner’s opposition to the original MTA in order to achieve a more favorable outcome. But have these additional options under the Pilot Program actually increased the number of MTAs filed and their success rates? Let’s review.
The USPTO’s last update to the MTA study (Installment 6, July 2020) provided statistics on the total number of pre-pilot and pilot-eligible MTAs filed and their success rates in completed AIA trials through March 31, 2020. According to Graphs II-III of the USPTO’s update, the PTAB reached decisions on MTAs requesting to substitute claims in 335 of the 4,783 completed trials through March 31, 2020. In other words, MTAs requesting to substitute claims were strategically used by patent owners in about 7% of these trials. And of this subset, slightly less than 15% were granted or granted-in-part and denied-in-part by the PTAB.
For pilot-eligible cases instituted on or after March 15, 2019 through Jan. 31, 2021, roughly 488 trials have been completed with a Final Written Decision (FWD) addressing claims. The PTAB addressed MTAs requesting to substitute claims in just under 10% of these trials. And of this subset, roughly 25% were granted or granted-in-part and denied-in-part by the PTAB.
What does the recent data suggest? With the slim percentage increase in MTAs requesting to substitute claims for pilot-eligible, completed trials through Jan. 31, 2021 versus completed trials through March 31, 2020, it is arguable whether the additional options under the Pilot Program have impacted patent owners’ decisions to file an MTA. Rather, the slight uptick simply could be due to patent owners and their counsel becoming more seasoned at strategically employing amendments in AIA trials. Interestingly, however, patent owners requesting Preliminary Guidance with their MTAs decreased by roughly 10% for the above-mentioned dataset in comparison with early statistics noted in Graph VII of the USPTO’s last update.
In terms of success rates, the Pilot Program does appear to improve patent owners’ chances for at least partially surviving challenges in AIA trials. But it is still significantly lower than the success rates of other available post-grant vehicles. Importantly, the USPTO reminded the public in April 2019 of complementary reissue and ex parte reexamination options and their timing constraints in view of AIA trials. Regarding reissues, the success rate of obtaining granted claims is more than double that of MTAs under the Pilot Program. Despite the drawbacks of a two-to-2.5-year average pendency for reissue applications, they offer many advantages including but not limited to cost, ability to file many more claims than those challenged in an AIA petition, potentially filing claims of different scope, ability to continue fighting via RCEs, and no active participation by a third party with the exception of protests. Patent owners may wish to consider all available options with their counsel if the strategy ultimately involves amending claims.
* With helpful research from Nicole Snyder, Practice Services 
**Data via Docket Navigator

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