Posts Tagged: amendments


Curing the PTAB: How 3 Fixes Will Make a Better, Fairer Process

When the America Invents Act (AIA) was being formulated, from about 2005 – 2011, nothing was more subject to change bill-to-bill than the proposed “1st look” and “2nd look” procedures …
By John White
7 months ago 8

Argument in Aqua Products Hints that Federal Circuit May Change PTAB Amendment Practice

Overall, a significant number of the eleven judges present for argument hinted through their questioning that they thought the PTO’s rulemaking was problematic.... The PTO’s …
By Paul Margulies
8 months ago 0

Federal Circuit’s En Banc Review in Aqua Products Could Upend PTAB Amendment Practice

On December 9, 2016, the en banc Federal Circuit will hear argument in In re Aqua Products, Inc. on an issue that has long been troubling patent owners involved …
By Paul Margulies
8 months ago 4

Patent Office Defends PTAB Denying Motions to Amend

Don't let the Patent Office fool you. If they wanted to offer patent owners procedural opportunities to fully and fairly engage in an amendment process for patents …
By Gene Quinn
1 year ago 40

Patent Office amends PTAB Trial Practice Rules

Last week, on Friday, April 1, 2016, the United States Patent and Trademark Office published a final rules in the Federal Register. These newly minted final rules, which become …
By Gene Quinn
1 year ago 8

Nike v. Adidas: Federal Circuit refines PTAB motion to amend practice in inter partes review

The USPTO argued that at the heart of the requirement that substitute claims be patentable over prior art not of record but known to the patentee is …
By Gene Quinn
1 year ago 2

Cuozzo and Broadest Reasonable Interpretation – Should the Ability to Amend Be Relevant?

On July 8, in In re Cuozzo, the CAFC denied en banc review of a prior panel decision that confirms the PTAB can use a different standard for …

Overview of USPTO proposed rule changes to practice before the Patent Trial and Appeal Board

USPTO proposed rule changes would amend the existing rules relating to trial practice for inter partes review (IPR), post-grant review (PGR), the transitional program for covered business …
By Gene Quinn
2 years ago 6

USPTO makes changes to AIA post grant proceedings

The immediate modification to the page limits for motions to amend is more in line with reality given the high burdens placed on patent owners. Even when …
By Jon Wright
2 years ago 1

Post Grant Challenges: Strategic and Procedural Considerations

There are several varieties of a stay. With post grant proceedings we’re talking mostly about discretionary stay. Every district court has inherent right to do this. …
By Dolly Krishnaswamy
4 years ago 0

Making Progress with Difficult Patent Applications

Some patent applications are difficult to get agreement on. The examiner won’t allow and the applicant won’t abandon. The net result is that office actions …
By Mark Nowotarski
7 years ago 10