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Amending Claims During Inter Partes Review: Patent Practitioners Beware



by Jaime D. Choi
Jones Day - San Diego Office

David B. Cochran
Jones Day - Cleveland Office

John A. Marlott
Jones Day - Chicago Office

Peter G. Thurlow
Jones Day - New York Office

August 11, 2014

Previously published on August 2014

Although patent owners are theoretically allowed to amend patent claims during an inter partes review ("IPR") proceeding at the U.S. Patent and Trademark Ofiice ("USPTO"), in all of the proposed claim amendments submitted thus far, only one amendment has been allowed by the USPTO's Patent Trial and Appeal Board ("PTAB" or "Board")—only one. And that patent was owned by the United States. Practitioners need to understand that common claim amendment practices in ex parte prosecution practice, such as automatic claim amendment entry, multiple opportunities to amend claims, and the ability to broaden the scope of claims, are not permitted in PTAB claim amendment practice.


 

The views expressed in this document are solely the views of the author and not Martindale-Hubbell. This document is intended for informational purposes only and is not legal advice or a substitute for consultation with a licensed legal professional in a particular case or circumstance.
 

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Author
 
Jaime D. Choi
David B. Cochran
John A. Marlott
Peter G. Thurlow
Practice Area
 
Intellectual Property
 
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