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.

Please See full Article Below for more Information.

LOADING PDF: If there are any problems, click here to download the file.

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.

© Pillsbury Winthrop Shaw Pittman LLP | Attorney Advertising

Written by:


Pillsbury Winthrop Shaw Pittman LLP on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.