An Examination 'Off-Ramp' For Motions To Amend Still Raises Hopes And Questions

During the first three years of implementing the America Invents Act (AIA), Patent Trial and Appeal Board (PTAB) decision-making created a perception that a patent owner's ability to amend claims during a post-grant proceeding was limited, at best. In 2015, legislative activity began to address this perceived problem with draft amendments to the patent statute.

While specific proposals varied, the concept of one approach was that a patent owner seeking to amend claims during a PTAB trial, could prosecute its proposed amendments like ordinary examination (or reexamination) in parallel with the underlying PTAB trial. This amendment examination process, termed an "off ramp" by some, has raised a number of policy and administrative issues. Many of these had solutions around which broad consensus might have been reached; for others, it was less clear. At the time, the legislative effort did not mature. Since then, however, conditions underlying the effort have not abated. In 2016, the en banc Federal Circuit heard argument in In re Aqua Prods. on whether the PTAB has been wrongly placing a burden on the patent owner regarding patentability of amended claims, underscoring potential problems with the current motion to amend practice. The possible outcomes in Aqua Products, either the status quo which motivated the earlier legislative activity, or a reversal potentially placing greater burdens on the PTAB, arguably make an alternative to the current motion to amend practice even more advantageous.


Congress provided in the AIA that a patentee may file a motion to amend the patent during an IPR or Post Grant Review (PGR), mandating that the Patent Office Director "prescribe regulations . . . setting forth standards and procedures for allowing the patent owner to move to amend the patent." 35 U.S.C. §§ 316 and 326. As interpreted by the Board, the regulations require that the patentee meet a burden to show patentability of the amended claims. See Idle Free Sys., Inc. v. Bergstrom, IPR 2012-00027, 2013 WL 5947697, at *4 (PTAB June 11, 2013); see also 37 C.F.R. § § 42.121 and 42.221; § 42.20. In practice, however, the particulars became an evolving set of requirements announced in decisions denying a motion to amend.

As a patent owner was generally allowed only one motion to amend, if that motion was denied for procedural or other reasons that the patent owner might have addressed, PTAB practice fostered a perception that patent owners could not obtain or maintain patent rights via motion to amend to which their inventions were entitled. At the same time, it was unclear if reexamination or reissue proceedings provided a meaningful alternative. PTAB panels often would stay these during a trial, delaying a patent owner's opportunity to pursue amended claims and potentially limiting the examining corps' ability to allow claims via an estoppel that would not have been present earlier and with which an examiner might not agree. See 37 C.F.R. § 42.73(d)(3). At least for a period, there also appeared to be disagreement within the Office about the availability of these procedures for claims involved in a trial. The upshot of Patent Office practice, as it evolved...

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