How can a patent owner amend claims in an inter partes review or post-grant review?

Patent owners have the opportunity to amend claims during inter partes review (IPR) or post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB). According to MPEP 1002.02(j):

“Motions by patent owners to amend a patent in an inter partes review or post-grant review proceeding. 37 CFR 42.121(a), 42.221(a).”

The process for amending claims typically involves:

1. Filing a motion to amend, which must be authorized by the Board
2. Proposing a reasonable number of substitute claims
3. Demonstrating that the proposed amendments respond to a ground of unpatentability involved in the trial
4. Showing that the amended claims do not enlarge the scope of the original patent claims or introduce new matter
5. Providing a claim listing that clearly shows the changes made to each claim

It’s important to note that the burden is on the patent owner to show that the proposed amended claims are patentable over the prior art of record and any art provided in light of the patent owner’s duty of candor.

To learn more:

• PTAB
• Patent Trial and Appeal Board
• claim amendments
• inter partes review
• post-grant review