Motions to Amend in Inter Partes Review Proceedings - A Quick Reference ; IIPI/BBNA AIA Post-Grant Patent Practice Conference


Statutory Basis: 35 U.S.C. § 316(d).

Rule: 37 C.F.R. § 42.121.

Guidance: Office Patent Trial Practice Guide (OPTPG), 77 Fed. Reg. 48766-67.

PTAB Decisions: Some discussed below.

1) Board approach to motions to amend highly restrictive. THIS IS NOT LIKE REEXAMINATION.

2) Procedural Requirements/Limitations

a. Generally only one opportunity to move to amend claims.

i. To be filed no later than with Patent Owner Response Rule 42.121(a)(1). No opportunity to amend claims with Preliminary Response. Rule 42.107(d).

b. Must discuss motion to amend with Board in conference call in advance of filing. Rule 42.121(a).

c. Proposed claim amendments may be contingent or non-contingent -- to be clearly stated in motion. Idle Free Systems, Inc. v. Bergstrom, Inc., IPR 2012-00027, Paper 26 at 10.

Please see full guide below for more information.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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