USPTO Proposes Changes to Post-Grant Amendment Procedures

The USPTO announced a proposal today to change the procedures for amending claims in post-grant proceedings.  Even though the AIA specifically provides for claim amendments in IPRs, claim amendments have been rare in actual practice.  USPTO Director Andrei Iancu stated that the new procedures are being proposed to allow patent owners a meaningful opportunity to amend claims during post-grant proceedings.

According to this proposal, the patent owner will have a window of six weeks following an institution decision to file a motion to amend. The petitioner will have six weeks to oppose.  One month after the opposition is due, the Board will provide a preliminary non-binding decision on the proposed amended claims.  The patent owner will then have one more opportunity to revise the amended claims, and the petitioner will have a corresponding opportunity to oppose the revision.  The Board will consider both the original claims and the proposed amended claims at the hearing and in the final written decision.

The USPTO is soliciting public input on this proposal.  Written comments should be received on or before December 14, 2018 to ensure consideration.