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ARTICLE · 11 DECEMBER 2019

Can Amendment Save Your Claims In IPR?

Wolf, Greenfield & Sacks, P.C.
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In the past, moving to amend the challenged claims during IPR was largely futile. The PTAB denied nearly all motions to amend, and many patent owners that might have benefited from...

United StatesIntellectual Property
Elizabeth Hudson
Elizabeth Hudson
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In the past, moving to amend the challenged claims during IPR was largely futile. The PTAB denied nearly all motions to amend, and many patent owners that might have benefited from amendment chose not to pursue it. But the rules concerning amendment in IPR are changing, and the number and success rate of motions to amend are ticking up. Patent owners have new reasons to think that amendment might save their patents from IPR.

The first sign that the amendment logjam in IPR is loosening was the Federal Circuit's 2017 decision in Aqua Products. That decision shifted the burden of proof on the question of whether the amended claims were patentable from the patent owner proposing them to the petitioner that brought the IPR. In the year since Aqua Products, patent owners have filed more motions to amend than in any prior year, according to USPTO statistics. And the success rate of motions to amend increased from about 8% before Aqua Products to about 20% after.

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