Posts Tagged: amendments
Iancu: Boundaries of a patent should not depend on which forum reviews the patent
Director Iancu: 'For the sake of predictability and reliability, the boundaries of a patent should not depend on which forum happens to analyze it. People who want …
PTAB Seeks Comments on Proposed Changes to Motion to Amend Practice in AIA Trials
The United States Patent and Trademark Office (USPTO) has published a Request for Comments (RFC) about a proposed procedure for motions to amend filed in inter partes …
USPTO Director Iancu tells AIPLA annual meeting: ‘It is a new day at the PTAB’
"The amendment process should allow the patent owner a meaningful process to draft narrower claims," Iancu said after pointing out that the statute specifically allows for patent …
Iancu: ‘It is unclear what is patentable and what is not, and that can depress innovation’
Earlier today USPTO Director Andrei Iancu testified at an Oversight Hearing before the House Judiciary Committee. In addition to detailing forthcoming changes to post grant proceedings, Director …
The Year in Patents: The Top 10 Patent Stories from 2017
It is that time once again when we look back on the previous year in preparation to close the final chapter of 2017 in order move fresh into …
USPTO Recognizes Federal Circuit’s Aqua Products Decision, Issues Memo on Motions to Amend in IPRs
On November 21, 2017, the USPTO’s Chief Administrative Patent Judge David P. Ruschke issued a memorandum to the Patent Trial and Appeal Board (PTAB) providing guidance on motions …
Predicting SAS Institute in Advance of SCOTUS Oral Arguments
The United States Supreme Court will hear oral arguments in SAS Institute v. Matal on Monday, November 27, 2017. This case will give the Supreme Court the opportunity to …
Industry Reaction to the Federal Circuit’s Decision in Aqua Products v. Matal
First-take reaction to Aqua Products v. Matal from a distinguished panel of experts. Todd Dickinson: "I don’t think that I’ve ever seen such a collection …
Federal Circuit decides Aqua Products, says patentability burden of amended claims on Petitioner
Sitting en banc the Federal Circuit issued a narrow ruling saying that the burden of persuasion must remain at all times on the petitioner, including with respect …
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 …
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 …
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 …
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 …
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 …
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 …
