Amending Patent Claims During Inter Partes Review

An inter partes review is mainly a contest over whether existing claims survive. But the statute also gives the patent owner a limited chance to change the claims during the trial. Using that chance well requires understanding what the statute allows, what the rules require, and how the burdens have shifted since 2012.

What the statute allows

Under 35 U.S.C. § 316(d)(1), the patent owner may file one motion to amend the patent during an IPR. The motion may:

• cancel any challenged claim; and
• for each challenged claim, propose a reasonable number of substitute claims.

Additional motions may be permitted on a joint request of the parties to materially advance settlement, or as the regulations allow (§ 316(d)(2)). Under § 316(d)(3), an amendment may not enlarge the scope of the claims or introduce new matter.

What the rules require

The Board’s rule is 37 C.F.R. § 42.121. Key points include:

• Conference first. The patent owner must confer with the Board before filing a motion to amend.
• Timing. Unless the Board orders otherwise, the motion is due no later than the patent owner response.
• Responsive to the trial. An amendment may be denied if it does not respond to a ground of unpatentability involved in the trial.
• Reasonable number. The rule presumes that one substitute claim is needed to replace each challenged claim; the patent owner can try to rebut that presumption by showing need.
• Support. The motion must show where the original disclosure supports each substitute claim.

Substitute claims are contingent in most cases: the patent owner asks the Board to consider them only if the original claims are found unpatentable.

Who bears the burden

In the early years, the Board required the patent owner to show that proposed substitute claims were patentable over the prior art, and motions to amend were rarely granted. That practice fed criticism of the Board’s use of broadest reasonable interpretation, discussed in Cuozzo and the end of BRI.

In Aqua Products, Inc. v. Matal (Fed. Cir. 2017) (en banc), the Federal Circuit held that the patent owner does not bear the burden of persuasion on the patentability of substitute claims. The patent owner still must meet the statutory and regulatory requirements for a motion to amend, such as a reasonable number of claims, no broadening and no new matter. The Office later addressed the allocation of burdens in its rules, and current § 42.121 should be consulted for the precise standard.

Preliminary guidance and revised motions

In 2019 the USPTO launched a motion-to-amend pilot program. It gave patent owners two new options:

• requesting preliminary guidance from the Board, an early, non-binding view of whether the motion meets the requirements and whether the substitute claims appear patentable on the record so far; and
• filing a revised motion to amend after receiving the petitioner’s opposition or the Board’s guidance.

The Office later made these procedures permanent by rule. Details, including deadlines and what the revised motion may contain, are set out in the current 37 C.F.R. § 42.121 and related USPTO guidance, which should be checked because motion-to-amend practice has changed several times.

Consequences of amending: intervening rights

Amended or new claims that emerge from an IPR can carry intervening rights. Under 35 U.S.C. § 318(c), such claims have the same effect as reissued claims under § 252 for anyone who made, used, sold or imported (or made substantial preparations to do so) the claimed subject matter before the certificate issued. A patent owner who narrows claims during trial may therefore lose the ability to recover for some earlier activity. For how courts have approached intervening rights after amendments, see intervening rights and amended claim text.

Alternatives to a motion to amend

A motion to amend is not the only way to change claims while an IPR is pending or after it ends. A patent owner may consider:

• a reissue application, which allows amendment (and, within two years of grant, broadening) through examination;
• ex parte reexamination, in which the patent owner may propose amendments in response to an examiner’s rejections; or
• a statutory disclaimer of claims that are unlikely to survive.

These proceedings follow examination procedures rather than trial procedures, but the Office may stay, suspend or coordinate them with a pending IPR under 35 U.S.C. § 315(d).

Key takeaways

• The patent owner gets one motion to amend under § 316(d), limited to a reasonable number of substitute claims, presumptively one per challenged claim.
• Amendments may not broaden the claims or add new matter, and must respond to a ground in the trial.
• After Aqua Products (2017), the patent owner does not bear the burden of persuasion on patentability of substitute claims.
• Preliminary guidance and revised motions, introduced in a 2019 pilot, were later made permanent; check current § 42.121.
• Amended claims can create intervening rights under § 318(c).