“A New Day” for Amending Claims in Post-Grant Proceedings

U.S. Patent and Trademark Office Director, Andrei Iancu, recently gave a speech to the American Intellectual Property Law Association where he discussed a new rule proposal aimed at improving the patent amendment process during post-grant proceedings.  Specifically, he informed the audience—and patent practitioners, generally—that the USPTO “will formally publish a notice seeking comments on a new claim amendment process for post grant proceedings.”  The stated purpose of the proposed rule change is to “ensure balance” in post-grant proceedings by making the amendment process “feasible and meaningful” for the owners of challenged patents.  

Director Iancu acknowledged that “the current amendment process in AIA proceedings is not working as intended,” referencing the Federal Circuit’s statement in the Aqua Products decision that “despite 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 largely have been prevented from amending claims in the context of IPRs.”  Director Iancu highlighted that despite patent owners’ right to amend their claims during post-grant proceedings, only 10 percent of patent owners actually move to amend claims when their patents are challenged, and the USPTO actually grants only 10 percent of those motions.  He further acknowledged the resulting belief that “parties have simply stopped even trying to amend the claims because they see the effort as largely futile."  

According to Director Iancu, the proposed rule change seeks to reverse this trend by making “the amendment process feasible and meaningful.”  To this end, Director Iancu stated that the goal of the proposed rule change is to “allow the patent owner a meaningful opportunity to draft narrower claims.  And in order for the opportunity to be truly meaningful, that patent owner needs input from the petitioner and the Board, so that appropriately scoped claims can be drafted in light of the prior art and arguments presented.”   

Consistent with these stated goals, the new amendment process would involve a motion to amend filed by the patent owner soon after institution, an opposition by the petitioner, a preliminary non-binding decision by the Board, and the opportunity for the patent owner to revise the amended claims in light of this preliminary decision.  More specifically, the patent owner will have six weeks following an institution decision to file a motion to amend. The petitioner will then have six weeks to oppose.  After receiving both parties’ papers, one month after the opposition is due the Board will provide a preliminary non-binding decision on the proposed amended claims.  The preliminary decision is intended to provide valuable insight to both parties regarding the merits of the motion to amend.  After the preliminary decision, the patent owner will have one further opportunity to revise the amended claims, and the petitioner will have a corresponding opportunity to oppose the revision.  In the end, the Board will consider both the original claims and any amended claims at the hearing and in the final written decision.  The desired effect of the new rule is to allow all three parties more than one opportunity to weigh in on the potential new claims.

As part of his rationale for proposing the new rule, Director Iancu made clear that it is not in the interest of the U.S. patent system to “invalidate a patent entirely if it actually describes patentable subject matter and appropriately scoped claims can be drafted.” Thus, if adopted, the proposed new amendment procedure could be yet another sign—along with, for example, the USPTO’s upcoming switch from the Broadest Reasonable Interpretation standard to the Phillips Claim Construction Standard in post-grant proceedings)—that the USPTO is seeking to improve patent owners’ ability to preserve or obtain patentable claims in post-grant proceedings.   

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