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Observations On Amendments in an Inter Partes Review

By Greg Lantier and John LeBlanc of WilmerHale

While the America Invents Act (AIA) permits amendments to claims during an inter partes review (IPR), attempts to amend claims have been largely unsuccessful to date. Indeed, the Patent Trial and Appeal Board (Board) has allowed amendment of claims (as opposed to outright cancellation) very infrequently since the AIA took effect. In this article, we consider the rules permitting amendments, survey the results of attempts to amend, and outline alternative strategies for amending claims of patents that are involved in IPR proceedings.

I. Statutory Authorization For and Rules Governing Claim Amendments During an IPR

Title 35 U.S.C. § 316(d) states that, during an IPR, the patent owner may file one motion to amend its patent by canceling any challenged claim and, optionally, for each challenged claim that it cancels, proposing a reasonable number of substitute claims. One substitute claim for each cancelled challenged claim is presumed to be reasonable, although the patent owner may file additional substitute claims on a demonstration of need. 1 Title 35 U.S.C. § 316(d) requires that such substitute claim not enlarge the scope of the challenged claim or introduce new matter. In Idle Free v. Bergstrom, IPR2012-00027 (“the Idle Free IPR”), the Board indicated that “a motion to amend should, for each proposed substitute claim, specifically identify the c...

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