The Patent Trial and Appeal Board (PTAB) recently released its Motion to Amend Study on post-grant proceedings to date (4/30/2016). Of the 4,850 total petitions filed, 1,539 had been instituted and completed trials, and Patent Owners have filed a motion to amend in 192 of those trials. The survey reveals more opportunities and risks for Patent Owners when probing further than the headlines.  At a high level, the oft-cited low percentage of ~3% in granting or partially granting MTAs does not account for 39% of the MTAs (74 of the 192 completed trials) where:

• The Patent Owner requested solely to cancel claims (17, or 9%)
• The MTA was rendered moot because the panel of judges found the original claims patentable (16, or 8%)
• The MTA was not decided because the case terminated prior to a final written decision (41, or 21%)

Accounting for these cases, the overall rate of granting MTAs rises to 5%, which remains a low rate. Nevertheless, a deeper investigation into these statistics reveals opportunities for Patent Owners to use MTA effectively under certain circumstances.

For Patent Owners, it appears that only 56% of MTAs are being denied because of prior art, a number that includes 41 cases decided on anticipation or obviousness alone and another 24 cases decided on the basis of multiple reasons that include obviousness.  Digging further, we see that 15% of MTAs fail for substantive reasons (e.g., deemed unpatentable under 101 or 112), and that another 8% of MTAs fail for more formal issues (e.g., under 35 U.S.C. 316 because of an unreasonable number of claims or because the scope of the claims is broadened).  While these metrics are not a reassuring statistic for Patent Owners, it is important to further note that a Petitioner is afforded an opportunity to substantively respond to a MTA and formulate a proposed rejection anew.  Nevertheless, these statistics suggest that MTAs may be justified when an amendment may sometimes prove advisable if crafted to clearly overcome the art of record in a manner that clearly goes substantially beyond the rejection of record, particularly where concerns exist with respect to the original claims.

Of course, amending before the PTAB poses a great deal of risk for Patent Owners. Indeed, the risks in considering a MTA should be balanced against the risks attendant to standing on the issued claims alone. The PTAB regularly reminds us that every case is different and that it is often a mistake to piece together trends and link cases that have much different facts. On balance, filing a MTA may be justified when an existing claim set confronts a difficult record. In contrast, the risks flowing from a MTA may not be justified in circumstances involving a different patent for which an IPR has been instituted, where the underlying record still retains a clear path to victory.