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Just What Does It Take to Amend Claims Before the PTAB?: Lessons Learned From the Board

By Andrew W. Williams, Ph.D.

Andrew W. Williams, Ph.D., an MBHB partner, has over a decade of experience in all areas of intellectual property law, with particular emphasis on patent litigation, post-issuance proceedings at the patent office, and patent procurement in the areas of biochemistry, pharmaceuticals, and molecular diagnostics.

The new post-issuance proceedings at the U.S. Patent and Trademark Office have been a real nightmare for patent owners. Congress created these three new mechanisms in 2011 - Covered Business Method patent review, Post-Grant Review, and Inter Partes Review (“IPR”) - responding, in part, to the public outcry over too many overly broad issued claims. Moreover, because challenging the validity of issued claims in federal court can be too difficult, costly, and time-consuming, Congress designed these proceedings before the newly formed Patent Trial and Appeal Board (“PTAB,” or “Board”) to be resolved expeditiously. To make matters worse for patent owners, petitioners were provided many advantages over similar actions in district courts, such as a lower evidentiary standard. In what appeared to be an attempt to even the playing field, Congress provided patent owners with a chance to amend their claims - a benefit not available in federal court. In practice, however, this ability has proven all but illusory. As of the end of 2014...

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