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United States Patent and Trademark Office › Claim Amendments

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
McDermott Will & Emery

Less Is More: IPR Claim Amendments May Not Enlarge Claim Scope

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a decision from the Patent Trial & Appeal Board denying a motion to amend claims during an inter partes review (IPR) proceeding, explaining that a claim amendment is...more

Foley & Lardner LLP

Type C Patent Term Adjustment Requires Fully Successful Appeal

Foley & Lardner LLP on

In Sawstop Holding LLC v. Vidal, the Federal Circuit upheld the USPTO’s interpretation of the Patent Term Adjustment (PTA) statute that limits the availability of PTA for time spent appealing an Examiner’s rejection. The...more

Fitch, Even, Tabin & Flannery LLP

Patent Term Adjustment is Not Available for Unsuccessful Appeals

Fitch, Even, Tabin & Flannery LLP on

On September 14, in SawStop Holding LLC v. Vidal, the Federal Circuit held that the owner of two patents was not entitled to patent term adjustment (PTA) based on delays associated with appeals of the USPTO’s initial...more

Knobbe Martens

When Can the PTO Extend a Patent’s Term Due to Delay From an Appeal?

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CHUDIK V. HIRSHFELD - Before Taranto, Bryson, and Hughes. Appeal from the United State District Court for the Eastern District of Virginia - Summary: An examiner’s self-reversal may not qualify as “reversing an...more

Jones Day

Trial Court Denies Amendment of Contentions To Add Reexam Claims Following Successful IPR

Jones Day on

What happens when patent claims are found unpatentable in inter partes review (“IPR”) and new claims are subsequently added to that patent through ex parte reexamination? The District Court for the Northern District of...more

Snell & Wilmer

Appealing the Rejection of a Patent Application

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Sometimes appealing an Examiner’s rejection is the only practical option. If no claims of valuable scope have been allowed or indicated as allowable, and all clarifying claim amendments, supporting evidence and salient...more

White & Case LLP

Managing economic and social change toward a sustainable future: A new era for US patents

White & Case LLP on

How has President Trump's "America First" philosophy affected US patent policy? White & Case partners discussed what an evolving US patent policy will mean for other nations, and to propose effective responses....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution - May 2019: Strategic Use of the Patent Prosecution Highway

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

At last count, there are 27 Global and IP5 Patent Prosecution Highway (PPH) participants with the U.S. Patent and Trademark Office (USPTO). Since the PPH provides a no fee way to speed up the examination process for...more

Womble Bond Dickinson

Arguing Definitions in Patent Prosecution

Womble Bond Dickinson on

Claim terms are given a broadest reasonable interpretation (BRI) consistent with the specification, ideally. Occasionally, a USPTO examiner interprets a claim term in a manner different from what the applicant in a patent...more

Knobbe Martens

Federal Circuit Review - November 2017

Knobbe Martens on

Fractured Federal Circuit Holds Patent Owner Does Not Bear Burden of Persuasion in IPR Motions to Amend - In Aqua Products, Inc. v. Matal, Appeal No. 2015-1177, the Federal Circuit, sitting en banc, held that a patent...more

WilmerHale

Jumping into the Deep End: Amendment Practice Post-Aqua Products

WilmerHale on

In the U.S. Court of Appeals for the Federal Circuit’s recent en banc decision in Aqua Products, a deeply fractured court provides a glimpse into the perspectives that some of the judges have on post-grant practice at the...more

Knobbe Martens

Federal Circuit Places The Burden Of Persuasion For Motions To Amend In IPRs On Petitioners

Knobbe Martens on

The Federal Circuit issued an en banc decision instructing the PTAB to assess patentability of amended claims in IPR proceedings without placing the burden of persuasion on the patent owner. Aqua Products, Inc. v. Matal, No....more

Mintz - Intellectual Property Viewpoints

AQUA PRODUCTS: The Federal Circuit Shifts The Burden of Proof On Amending Claims During An IPR From The Patent Owner To The...

Mintz - Intellectual Property Viewpoints on

The United States Court of Appeals for the Federal Circuit’s recent decision in Aqua Products Inc., v. Matal materially changes the burden of proof associated with the patentability of amended claims during an inter partes...more

Jones Day

Petitioners Bear Burden Of Proving Claims Amended During IPR Unpatentable . . . For Now

Jones Day on

In yesterday’s decision in Aqua Products, Inc. v. Matal, No. 15-1177 (Fed. Cir. Oct. 4, 2017) (en banc), the Federal Circuit issued five opinions, spanning 148 pages, addressing the question of who bears the burden of proving...more

Foley & Lardner LLP

CAFC Eases Amendment Process In IPR Proceedings

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Today in Aqua Products, Inc. v. Matal, a fractured Court of Appeals for the Federal Circuit (CAFC) sitting en banc decided to flip the burden of persuasion onto petitioners in IPR proceedings to show that an amendment is not...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Concludes that PTAB Not Justified in Placing Burden of Persuasion on Patent Owners When They Seek to Amend Claims...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

After several months of consideration, the U.S. Court of Appeals for the Federal Circuit sitting en banc in Aqua Products, Inc. v. Matal has concluded that, under the current rules, the U.S. Patent and Trademark Office is not...more

McDermott Will & Emery

Federal Circuit Will Review PTAB Rules for Claim Amendments in AIA Reviews

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The full US Court of Appeals for the Federal Circuit has issued an order granting en banc review of the Patent Trial and Appeal Board’s (PTAB’s or Board’s) rules governing amendments filed in the course of America Invents Act...more

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