• Amending Claims During Inter Partes Review: Patent Practitioners Beware
  • August 11, 2014 | Authors: Jaime D. Choi; David B. Cochran; John A. Marlott; Peter G. Thurlow
  • Law Firms: Jones Day - San Diego Office ; Jones Day - Cleveland Office ; Jones Day - Chicago Office ; Jones Day - New York Office
  • 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.