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The PTO recently released a Motion to Amend Study, assembling data regarding the filing and success rates of motions to amend in AIA proceedings. Parties have filed motions to amend in only 12.5% of the completed AIA trials. The PTAB has denied 95% of the motions decided on the merits. As of April 30, 2016, the PTAB has granted (or granted in part) only 6 motions to amend. Only 56% of the cases list anticipation or obviousness as the grounds of rejection, as the PTAB routinely denies motions to amend on other grounds, such as § 101 and § 112 reasons.

In its accompanying blog post, the PTO recognizes some parties think motions to amend are “futile,” due to their low success rate. But the PTO states that all rejections identify specific patentability issues with the proposed amendments and are appealable. While the PTO encourages continued discussion on the topic, it suggests low amendment rates may be unavoidable due to the one-year time limit and lack of back-and-forth examination during AIA proceedings.

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