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Patent Office to Allow Patent Owners to Amend Claims More Easily

By William Vogeler, Esq. on October 31, 2018 11:02 AM

Somebody said to be careful what you ask for, but they didn't mean to ask the Patent Trial and Appeals Board.

In any case, the PTAB has been listening to practitioners. In response, the agency recently rewrote its trial practice guide and revised standard operating procedures.

As if patent practice weren't hard enough, now the PTAB is proposing changes to its claims process. It's a good thing they didn't change the substantive law. Well in a way, they did that, too.

Amended Claims

Tracking announcements from the agency's director, Bloomberg Law reported on a new process that will allow patent owners to amend their claims during administrative challenges. Andrei Iancu said the current amendment process under the America Invents Act isn't working as intended.

Speaking to the American Intellectual Property Law Association, Iancu said the agency had not previously outlined a procedure to amend claims. Under the new procedure, patent owners will have six weeks after a patent challenge to file a motion to amend.

The petitioner will have six weeks to respond, and the board will then deliver a preliminary, non-binding decision on the amended claims.

"Having the board provide this extra feedback earlier in the case should lead to more narrowly tailored and focused claim amendments, and potential earlier resolution of the issues," Iancu said.

Precedential Opinions

While the changes are largely procedural, the agency is revisiting its substantive decisions. It created a panel to determine which decisions are precedential.

Iancu said the PTAB has averaged "only a handful of precedential opinions" each year. He said that amount seemed "far too low" to address the "thorniest issues" and to instill consistency throughout the agency.

So more changes are on the way, including some that have been there all along.

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