Recently updated statistics from the USPTO provide little comfort for patent owners seeking to amend claims during an IPR proceeding. The Motion to Amend Study, Installment 5 through FY2018, updated March 2019, reports that patent owners have filed a motion to amend in 326 of the 3,599 completed trials (9%) and in 90 of the 670 pending trials (13%). Of the 326 motions filed in completed trials, the Board decided a motion to amend requesting to substitute claims in 205 trials (63%), and of those decided motions, Board granted or granted-in-part a motion to amend in only 21 of the 205 trials (10%).
Latest Post
More Posts
Trade Show Publication Dooms Patent in IPR Appeal Despite Contrary Decision in ITC Appeal
PTAB Issues First Biotech/Pharma PGR Final Written Decision Based On Written Description Challenge
Rituxan Patent Spared by Failure to Establish Product Label as “Printed Publication”
First Derivation Proceeding Instituted by PTAB
PTAB Defines Further Limitation to Sovereign Immunity Defense
Eli Lilly’s Pemetrexed Therapy Claims Survive Challenge At PTAB
Assertion of “Routine Optimization” Without Additional Reasoning Insufficient to Support Obviousness Conclusion
Eli Lilly Successfully Challenges U Penn Erbitux® Claims at PTAB, Derailing Infringement Suit
PTAB Exercised Discretion to Terminate Ex Parte Reexaminations in Ariosa v. Illumina; CAFC to Review
Subscribe: Subscribe via RSS
Blogs
Firm/Org