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%).
The USPTO recently issued a Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding and slides, summarizing the existing USPTO practice with respect to these ex parte proceedings when requested during an IPR. The notice does not amend current practice, but merely serves to remind patent owners that they may avail themselves of a reissue application or a request for reexamination to amend claims anytime before, during, or after an IPR trial so long as the application or request is filed before the USPTO issues a trial certificate in the IPR proceeding.
The notice summarizes reissue and reexamination practice and, more interestingly, outlines the PTAB’s considerations in deciding whether to stay a parallel proceeding during the pendency of an IPR or other AIA proceeding involving the same patent. The Board may grant a stay in a parallel Office proceeding where “good cause” exists. Considerations include, but are not limited to:
- whether the claims challenged in the AIA proceeding are the same as or depend directly or indirectly from claims at issue in the concurrent parallel Office proceeding;
- whether the same grounds of unpatentability or the same prior art are at issue in both proceedings;
- whether the concurrent parallel Office proceeding will duplicate efforts within the Office;
- whether the concurrent parallel Office proceeding could result in inconsistent results between proceedings (e.g., whether substantially similar issues are presented in the concurrent parallel Office proceeding);
- whether amending the claim scope in one proceeding would affect the claim scope in another proceeding;
- the respective timeline and stage of each proceeding;
- the statutory deadlines of the respective proceedings; and
- whether a decision in one proceeding would likely simplify issues in the concurrent parallel Office proceeding or render it moot.
These factors indicate whether “good cause” exists to grant a stay in a parallel Office proceeding. The notice also outlined considerations contemplated by the Board in deciding whether to lift a stay of a parallel Office proceeding involving the same patent:
- whether factors considered when ordering the stay have changed from when stay was instituted;
- whether the patent owner has requested adverse judgment or canceled all claims at issue in AIA trial proceeding;
- whether the patent owner is requesting rehearing of, or appealing, the final written decision in the AIA trial proceeding;
- whether the patent owner agrees to abide by estoppel provisions in 37 C.F.R. § 42.73(d)(3); and
- whether lifting the stay would be in the interests of efficient administration of the Office and integrity of the patent system.
The Board generally indicates that a stay will remain in place “pending the termination or completion of the instant proceeding,” i.e., at least after the deadline for filing a notice of an appeal under 35 U.S.C. § 142 has expired. The patent owner may file a motion to lift the stay beforehand, which will typically be granted absent reasons to deny the request (e.g., balancing the factors above).
Reissue and reexamination are not typically employed by patent owners during AIA proceedings. Indeed, according to recent USPTO statistics, 89% of patents challenged in AIA proceedings have not had any associated reexams or reissues. In issuing this notice, the Office appears to be advertising alternative paths to claim amendments that are more familiar, and arguably more predictable, to patent owners than motions to amend.