Motions To Amend In Inter Partes Review Proceedings – A Quick Reference

Statutory Basis: 35 U.S.C. § 316(d).

Rule: 37 C.F.R. § 42.121.

Guidance: Office Patent Trial Practice Guide (OPTPG), 77 Fed. Reg. 48766-67.

PTAB Decisions: Some discussed below.

1) Board approach to motions to amend highly restrictive. THIS IS NOT LIKE REEXAMINATION.

2) Procedural Requirements/Limitations

1. Generally only one opportunity to move to amend claims.
   
   
   1. To be filed no later than with Patent Owner Response Rule 42.121(a)(1). No opportunity to amend claims with Preliminary Response. Rule 42.107(d).
2. Must discuss motion to amend with Board in conference call in advance of filing. Rule 42.121(a).
3. Proposed claim amendments may be contingent or non-contingent -- to be clearly stated in motion. Idle Free Systems, Inc. v. Bergstrom, Inc., IPR 2012-00027, Paper 26 at 10.