by Matthew Johnson | Sep 20, 2021 | Amendment Practice
The United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to extend the Motion to Amend (MTA) pilot program. This program provides additional options for a patent owner who files an MTA in a trial proceeding...
by Sarah Geers | May 26, 2021 | Amendment Practice, Federal Circuit Appeal
By Sarah Geers – Claims added or amended during inter partes review (“IPR”) do not become part of a patent until the Patent Office officially says so by issuing an IPR certificate under 35 U.S.C. § 318(b). The patentee needs more than a Final Written Decision...
by Matthew Johnson | Mar 28, 2021 | Amendment Practice
By Sarah Brickey and Matt Johnson – The precedential ruling in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600, Paper 67 (PTAB July 6, 2020) allows the Patent Trial and Appeals Board (PTAB) to raise an issue regarding substitute claims that was...
by Josh Nightingale | Mar 8, 2021 | Amendment Practice
By Grant Hebrank* and Josh Nightingale – The Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a final rule regarding the allocation of the burden of persuasion for the patentability of substitute claims on...
by Matthew Johnson | Feb 12, 2021 | Amendment Practice, Trial Institution
By Andrea Beathard and Matt Johnson – On January 28, 2021, the PTAB held a Boardside Chat webinar at which three PTAB judges discussed four recent developments related to America Invents Act (“AIA”) trials. First, Vice Chief Judge Michael Tierney discussed what...
by S. Christian Platt | Dec 20, 2020 | Amendment Practice
By Megan McKnelly* and S. Christian Platt – On December 3, 2020, the Patent Trial and Appeal Board (“PTAB”) released data regarding the usage and success rates of its Motion to Amend (“MTA”) Pilot Program (“Pilot”). All PTAB cases instituted on or after March...
