Changes Coming To Post-Grant Amendment Practice

There are three new proceedings to challenge patents: inter partes review (IPR), covered business method proceeding (CBM) and post-grant review (PGR). One of them is considered in almost every patent litigation. These proceedings provide a fast, low-cost way to clear away bad patents.

About 70 percent of petitions to institute one of these proceedings are granted. Once instituted, the Patent Trial and Appeal Board (PTAB) is twice as likely to cancel all of the challenged patent claims than to confirm all of the challenged claims. In only a handful of the thousands of cases filed has the patent owner been allowed to amend the claims. The PTAB rejects over 90 percent of motions to amend, unless the patent owner is simply giving up and canceling claims outright. Low rates of success in making amendments have largely been driven by the way the PTAB has implemented post-grant proceedings. The most problematic requirements have been inventiveness over the prior art and tight time limits for making a motion to amend.

The U.S. Court of Appeals for the Federal Circuit has questioned the harsh requirements for making amendments. The PTO has instituted some changes and congress is considering others. It will likely become easier for patentees to amend claims during post-grant proceedings. Both patentees and potential challengers should prepare for this shift, with petitioners making the best use of post-grant challenges and patent owners maximizing the chance of retaining valuable patent rights.