"A New Day" For Amending Claims In Post-Grant Proceedings

U.S. Patent and Trademark Office Director, Andrei Iancu, recently gave a speech to the American Intellectual Property Law Association where he discussed a new rule proposal aimed at improving the patent amendment process during post-grant proceedings. Specifically, he informed the audience—and patent practitioners, generally—that the USPTO "will formally publish a notice seeking comments on a new claim amendment process for post grant proceedings." The stated purpose of the proposed rule change is to "ensure balance" in post-grant proceedings by making the amendment process "feasible and meaningful" for the owners of challenged patents.

Director Iancu acknowledged that "the current amendment process in AIA proceedings is not working as intended," referencing the Federal Circuit's statement in the Aqua Products decision that "despite repeated recognition of the importance of the patent owner's right to amend during IPR proceedings—by Congress, courts, and the