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ARTICLE · 16 NOVEMBER 2018

"Comments Anyone?": PTO Makes Proposed New IPR Amendment Process

Marshall, Gerstein & Borun LLP
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On October 29, 2018, the Patent and Trademark Office published a request for comments on a proposal to establish a new procedure by which patent owners may seek to amend their claims during inter partes review.

United StatesIntellectual Property
Thomas L. Duston
Thomas L. Duston
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On October 29, 2018, the Patent and Trademark Office published a request for comments on a proposal to establish a new procedure by which patent owners may seek to amend their claims during inter partes review. Comments are due on or before December 14, 2018. The PTO proposes a pilot program implementing the new amendment process to begin shortly after the deadline for comments.

Currently, a patent owner may move to amend once, following institution of inter partes review. A petitioner may respond to such a motion, and the Board rules on whether to allow amendment as part of its final written decision. The Board may authorize an additional motion to amend when "there is good cause showing." 37 C.F. R. 42.121(c) and 42.221(c).

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