Intellectual property attorneys Davin Stockwell, Don Daybell and Mark Shean recently authored an article in Law360 that discusses the USPTO’s new Inter Partes Review procedure and a patent owner’s ability to amend claims being challenged. An excerpt from their article is included below.
One feature of the U.S. Patent and Trademark Office’s new inter partes review procedure that is different from conventional Federal court litigation is the patent owner’s ability to amend or replace the claims being challenged, to overcome the art cited by the IPR petitioner.
Until recently, it has not been clear how much latitude the patent owner would have to amend claims. The IPR regulations merely provide that the patent owner can file one motion to amend with presumptively a single amended or new claim to replace each withdrawn old claim.
The USPTO’s Patent Trial and Appeal Board is beginning to shed some light on how this process works, and it is becoming clear that there are substantial limitations on the patent owner’s ability to amend.