How to Fix the Amendment Fallacy

The Patent Trial and Appeal Board has made it hard for patent owners to amend their claims. Patrick Doody outlines the problems this causes and how to fix them.

Since being established under 2011’s America Invents Act (AIA), signed into law in September 2011, the Patent Trial and Appeal Board (PTAB) has issued a number of decisions that have made it extremely difficult and impractical for the patent owner to amend its claims.

The basis for the PTAB’s requirement that a patent owner must prove the patentability of its proposed amended claims, however, may not be consistent with the statute, the legislative history of the AIA, or the rules. In addition, the PTAB’s requirements that make it impractical for a patent owner to amend its claims are inconsistent with other orders and decisions.

Originally Published in Managing Intellectual Property on April 28, 2014.

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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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