Patent Owners: Amendment Practice Without a Crystal Ball

Posted by Ed Walsh on Nov 23, 2015

We recently wrote about what petitioners can do in the face of current uncertainty around amendment practice in post-grant proceedings. We now turn to considerations for patent owners, who up to this point have been allowed to amend claims in only a handful of the thousands of cases filed—but upcoming action by the PTAB, the courts or Congress is likely to change that.

Patent owners will be faced with strategic choices of whether, where and how to amend. Just because amendments are possible does not mean that amending is always the right strategy. Making claim amendments in reissue or, if there is a related application pending, in the related application may offer more flexibility. But depending on the nature of the prior art already in the proceeding or otherwise known to the patent owner, it may be preferable to push ahead with an amendment in a post-grant proceeding, so that the petitioner is bound, at least in some circumstances, by a finding that an amended claim is patentable.

The patent owner may propose ‘‘conditional’’ amendments—to be entered only if the PTAB concludes that the original challenged claims are not patentable and the amended claims are. Such an approach may seem to offer the best of both worlds. However, a failed amendment attempt in a post-grant proceeding can block attempts to get the same or similar claims in related proceedings. The PTO should require the patent owner to show that any claim presented in a related application has patentable differences relative to proposed amended claims that were rejected in a post-grant proceeding.

As a further trap for the unwary, patent owners proposing amendments in post-grant proceedings have a duty of candor, which the PTAB views as creating an obligation to disclose material prior art. The PTAB panel credited for establishing that rule limited the obligation by focusing on the claim limitations being added by amendment and prior art known to the patent owner. However, proposed amendments to the duty of candor should be tracked, as they could expand the duty, expanding the prior art that needs to be disclosed when making amendments in a post-grant proceeding. The consequences for failure to comply with that duty may be that courts will later refuse to enforce the patent, in the same way that a breach of the duty of disclosure in ex parte prosecution leads to the patent being unenforceable.

Keeping these strategic considerations in mind, patent owners can maximize their chances of retaining valuable patent rights.

To learn more, read our recent article, “Plan Now for Coming Changes to Post-Grant Amendment Practice,” which appeared in the October issue of Today’s General Counsel.

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.