How to Fix the Amendment Fallacy

Since being established under 2011’s America Invents Act (AIA), signed into law in September 2011, the Patent Trial and Appeal Board (PTAB) has issued a number of decisions that have made it extremely difficult and impractical for the patent owner to amend its claims.

The basis for the PTAB’s requirement that a patent owner must prove the patentability of its proposed amended claims, however, may not be consistent with the statute, the legislative history of the AIA, or the rules. In addition, the PTAB’s requirements that make it impractical for a patent owner to amend its claims are inconsistent with other orders and decisions.

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The Patent Trial and Appeal Board has routinely denied motions to amend in a number of proceedings despite the board’s director making it clear that patent owners had a right to file a motion to amend the claims and did not need authorisation from the PTAB. One example is the first PTAB order to discuss a motion to amend, Idle Free v. Bergstrom, which was first dismissed first because Bergstrom did not confer with the board, and then because the board presented a number of new requirements including proving that its claims are patentable. A modification to the post-grant review process would level the playing field. First, the requirement that a patent owner must prove its claims patentable should be overturned. Second, the USPTO should revise the rules to preclude presenting alternative or contingent amendments. Third, the first seven months of a post-grant review proceeding could be modified to permit a patent owner to amend its claims, although this modification would be difficult without the above-noted statutory reprieve on the one year pendency requirement.

Authority for permitting amendments

Section 6 of the AIA provides the statutory framework for two new post-grant proceedings before the PTAB; inter partes review, and post-grant review. This section of the AIA added new statutory language specifically authorising patent owners in post-grant proceedings to amend their claims, and granting the director the authority to prescribe regulations that set forth the standards and procedures for allowing the patent owner to move to amend the patent - 35 USC §§316(a)(9) and (d) for inter partes review, and 35 USC §§326(a)(9) and (d) for post-grant review.

The director therefore proposed regulations, published in February 2012, that provided the patent owner with an opportunity to amend the patent. These proposed rules permitted a patent owner to file one motion to amend a patent after conferring with the Board, and required the motion to set forth the support for the amendment (§42.121(b) and §42.221(b)), to show how the amendment responds to a ground of rejection (§42.121(c)(1) and §42.221(c)(1)), and to explain why the amendment does not enlarge the scope of the claims or introduce new matter (§42.121(c)(2) and §42.221(c)(2)).

Members of the public commented on these proposed rules. Some comments recommended that the director prohibit patent owners from amending patent claims that are being asserted against a defendant-petitioner in litigation, but these were not adopted. The final rules stated that motions to amend may be denied where the amendment does not respond to a ground of unpatentability, or where the amendment seeks to enlarge the scope of the claims or introduce new matter. This language therefore found its way into the final rules. Additional requirements included a presumption of a one-to-one correspondence between original and substitute claims, and a listing setting forth the support in the original disclosure of the patent for each claim.

The director therefore clearly prescribed rules governing the ability of the patent owner to move to amend its claims. The director made it clear that patent owners had a right to file a motion to amend the claims and did not need authorisation from the PTAB (although a conference was required), and that the motion would be denied if it did not comply with certain provisions set out in 37 CFR §42.121 and 37 CFR §42.221. It was rational and reasonable for patent practitioners to believe that if they complied with the provisions of these rules, their motion to amend would be entered.

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