Practice Tip: PTAB Guidance On Motions To Amend

During an IPR/PRG proceeding, a patent owner may once amend the challenged claims. The amendment can cancel a challenged claim or propose substitute claims. The proposed substitute claims are only "proposed claims." They are not added to the patent unless the corresponding motion to amend has been granted by the Board.

Motions to amend must comply with 37 C.F.R. § 42.121, and can be filed after approval by the Board. Because the scope of a motion to amend is limited to a response to the grounds of unpatentability involved in the trial, the patent owner is not allowed to enlarge the scope of the claims of the patent or introduce new matter. Thus, for each proposed substitute claim, the motion must identify 1) the challenged claim which it is intended to replace; 2) a patentable distinction over the prior art; and 3) written description support in the original disclosure of the patent for the substitute claim. In two recent decisions, the Board provided guidance on