USPTO Proposes Rule Changes For Amendments In IPR

A longstanding complaint of patent owners involved in inter partes review (IPR) before the United States Patent and Trademark Office (USPTO) has been the practical inability to amend the claims of a patent involved in IPR. The limited availability of amendment has largely been premised on the lack of an examination during an IPR, as compared to reexamination proceedings. As the USPTO has said, an IPR is "more adjudicatory than examinational, in nature."¹ Recently, however, patent owners have seen a shift in their direction. Last year, the Federal Circuit recognized that "[d]espite repeated recognition of the importance of the patent owner's right to amend during IPR proceedings—by Congress, courts, and the PTO alike—patent owners have been prevented from amending claims in the context of IPRs."² Last week, in remarks to the American Intellectual Property Law Association, Andrei Iancu, the director of the USPTO, announced proposed rule changes to introduce a "robust new