At the AIA Trials conference at Santa Clara Law school on April 29, 2014, the Patent Trial and Appeal Board (PTAB) administrative judges noted it is difficult to amend claims during an inter partes review (IPR), post-grant review (PGR), or covered business methods (CBM) review (i.e., the AIA proceedings).
Part of the problem appears to be attorneys are confusing claim amendment practice in AIA trials with that employed in patent prosecution. In prosecution of a US patent application one can freely amend a claim before the final Office action as long as the amended claim meets the requirements of 35 USC 112. Once amended, the burden shifts to the examiner to establish how the amended claim is unpatentable. In IPR, PGR, or CBM proceedings, the patent owner can only file a motion proposing to amend a claim then bears the burden to show the claim is patentable. For whatever reason, patent owners are having a difficult time meeting these two requirements and are not getting any claim amendment entered in the AIA proceedings, which can invalidate the patent claim.
For tips on how to succeed on getting amendments entered, please see USPTO Message from PTAB: How to Make Successful Claim Amendments in AIA Trial Proceedings
Updated May 22, 2014: We now have exactly one case where the motion to amend claims was permitted. Although these are relative new proceedings, the comment during the conference that "it is difficult to amend claims in an AIA trial" understates the difficulty patent owners currently face.
Copyright © 2014 Robert Moll. All rights reserved.