Amending Claims During "Inter Partes" Review: Patent Practitioners Beware

Although patent owners are theoretically allowed to amend patent claims during an inter partes review ("IPR") proceeding at the U.S. Patent and Trademark Ofiice ("USPTO"), in all of the proposed claim amendments submitted thus far, only one amendment has been allowed by the USPTO's Patent Trial and Appeal Board ("PTAB" or "Board")—only one. And that patent was owned by the United States. Practitioners need to understand that common claim amendment practices in ex parte prosecution practice, such as automatic claim amendment entry, multiple opportunities to amend claims, and the ability to broaden the scope of claims, are not permitted in PTAB claim amendment practice.

This Commentary briefly addresses some of the unique characteristics of PTAB post-grant amendment practice, including motion timing, the scope of amendments, the use of "substitute" claims, and the "contingent" nature of PTAB claim amendments. This Commentary also discusses—from the perspectives of