The Tide is Turning: Changes to Come in Amendment Practice

Posted by Ed Walsh on Aug 5, 2015

If you look at the PTAB’s current stats, chances are slim for patent owners attempting to amend claims during IPRs, covered business method proceedings (CBMs), and post-grant reviews (PGRs). Over 90% of all motions to amend are rejected by the Board, aside from those that cancel claims outright. But the tide may turn: Recent changes inside and outside the PTO offer a glimmer of hope to patent owners.

Changes by the PTO

PTO Director Michelle Lee highlighted amendment practice at the top of a list of “quick fixes” announced on March 27, 2015. Acknowledging that 15 pages “is not sufficient to explain adequately why the amended claims are patentable,” the PTO authorized motions of up to 25 pages along with corresponding allowances for oppositions and replies. The new rules—finalized on May 19th—also authorize claim appendices, which do not count against the page limits.

Lee also reported that the PTO is considering additional changes to amendment practice as part of a “second rule package.” The notice suggested that patentees may soon be able to file motions without “mak[ing] a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office.” The proposed rule package was originally projected by the end of July 2015, but has not yet been announced.

Changes by Congress

Congress may mandate changes to amendment practice even if the PTO maintains—and the Federal Circuit accepts—the status quo. As of this writing, it is unclear whether legislation will be enacted and if so how it would impact patentees’ ability to amend during AIA proceedings. Senate Judiciary Committee Chairman Grassley called the amendment issue a “difficult nut to crack.” Further, many reform proposals call for requiring the Board to abandon the “broadest reasonable interpretation” standard and instead interpret claims as they would be construed in litigation. This approach may undermine proposals to mandate more flexible amendment practice. The PTO maintains that Congress should completely repeal the right to amend if it mandates the claim interpretation change.

Change by the Board

The Board itself may have already started to treat proposed amendments more favorably as reports swirl of rule changes and patent reform legislation. It recently granted a patentee’s motion to amend four claims to narrow a range to circumvent prior art, notwithstanding the challenger’s argument that the patentee had failed “to address all relevant prior art known to” the patentee. While citing Idle Free Systems v. Bergstrom, the panel stressed that the patentee need only explain why the claims were “patentable over the prior art of record”—not prove patentability over all references known to one of ordinary skill. This approach appears at odds with previous holdings that patentees must indicate whether the additional feature recited in the proposed substitute claim “was previously known anywhere.”

Stay tuned for a post on recent Federal Circuit decisions that also indicate changes to come in amendment practice. To read more of our analysis on this subject, check out our recent article in Bloomberg BNA’s Patent, Trademark & Copyright Journal.

 

Reproduced with permission from BNA's Patent, Trademark & Copyright Journal, 90 PTCJ 2648, 07/17/15. Copyright [1] 2015 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com

Topics: Petitioners, Patent Owners

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