R. Specifically, patent owners are free to further amend claims in a narrower manner so long as an amendment to that claim responds to a ground of unpatentability. This should provide additional help in leveling the playing field between patent owners and defendants during litigation because it should make defendants think carefully about whether the filing of an IPR has significant potential to damage their case of invalidity and/or noninfringement.1Am. Nat’l Mfg. Inc. v. Sleep No. Corp., 52 F.4th 1371, 2022 USPQ2d 1085, 2022 WL 16909720 (Fed. Cir. 2022). 2Id., 52 F.4th at 1375–76.3Id., 52 F.4th at 1379.4Id., 52 F.4th at 1380.5Id., 52 F.4th at 1380 (citations omitted).6Id., 52 F.4th at 1381.7 Notice Regarding a New Pilot Program Concerning Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 84 Fed. Reg. 9497 (March 15, 2019). 8 Extension of the Patent Trial and Appeal Board Motion To Amend Pilot Program, 87 Fed. Reg. 60134 (October 4, 2022).

urther depicts the uptick in grant rate (calculation includes both granted and granted-in-part).Graph XIII above compares a patent owner’s next filing based on whether the pilot MTA requested preliminary guidance. As expected, a patent owner is much more likely to file a revised MTA after receiving preliminary guidance compared to not receiving preliminary guidance.In sum, the results of the study indicate an increased filing of MTAs and revised MTAs following preliminary guidance, as well as increased grant of MTAs during the MTA Pilot Program period.The USPTO is further considering making the MTA Pilot Program permanent through notice-and-comment rulemaking, subject to stakeholder feedback and suggestions on the program and on amendment practice generally. Given the previous extensions of the program, it is likely that the USPTO will adopt a more permanent form of the MTA Pilot Program.See Notice Regarding Extension of the Patent Trial and Appeal Board Motion to Amend Pilot Program, 87 FR 60134 (Oct. 4, 2022).See Request for Comments on MTA Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 83 FR 54319 (Oct. 29, 2018); see also Notice Regarding a New Pilot Program Concerning Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 84 FR 9497 (Mar. 15, 2019).See Report on Motion to Amend Study (updated Mar. 2022). https://www.uspto.gov/patents/ptab/motions-amend-study