Inter partes review (IPR) proceedings were first introduced on September 16, 2012, as part of the America Invents Act (AIA)

This was under the guidance of the Patent Trial and Appeal Board (PTAB), wherein the PTAB is an administrative law body of the United States Patent and Trademark Office (USPTO) that decides issues of patentability.

Since their introduction, inter partes review (IPR) proceedings before the PTAB have become a common feature of patent litigation in the US. Using an IPR, a third party can challenge the validity of any granted patent claims, particularly if they have been, or anticipate being, accused of infringing a US patent; as long as they can demonstrate a “reasonable likelihood that” they will prevail in the dispute.

Once an IPR is filed, the PTAB reviews the petition and the patent owner’s preliminary response to decide whether to initiate a trial. If the PTAB agrees to move forward, the patent owner may submit a “motion to amend” as a contingent measure. This motion allows the patent owner to amend the original claims, aiming to avoid trial and ultimately, the potential loss of the patent.

The PTAB will consider a motion to amend if it finds the original claims to be unpatentable. If the motion is granted at the end of the IPR trial, the amended claims will replace the original ones.

The existing system of motion to amend has drawn some criticism since its introduction, partly because the PTAB rarely approves motions. Another concern was whether the PTAB itself could raise unpatentability issues for amended claims if the original IPR petitioner did not challenge the amendment (see further comments on this later).

However, on September 18, 2024, the USPTO issued a “final rule[1]” regarding motions to amend in IPRs. This rule allows patent owners to seek preliminary feedback from the PTAB on proposed amendments before a final written decision is made. The goal of this guidance is to provide early insight that could improve the chances of a motion to amend being granted.

When preliminary guidance is requested by a patent owner, the petitioner may file an opposition to the original motion to amend. In such cases, the PTAB will issue non-binding preliminary guidance based on both the motion and the opposition. If the PTAB does issue preliminary guidance, the patent owner has the option to submit a revised motion to amend, which would replace the original in the proceedings.

The final rule also clarifies that this guidance is not binding on the PTAB’s final decision, cannot be reheard, and is not subject to appellate review. Despite this, from pilot trials[2] the ability to ascertain preliminary guidance has been viewed as a positive change to the IPR process. It has been widely reported in the relevant US press that these changes, have also led to delays in IPR proceedings, prompting the PTAB to review the overall timeline of the IPR process[3].

There are still unresolved issues surrounding how patentability is decided within the IPR process[4], but we will publish further updates as the details become clearer. For now, it is hoped that the new rules for ‘motions to amend’ will provide greater clarity for practitioners dealing with claim amendments in IPR trials.

For more information regarding any of the above, including how IPRs can be used in a US and/or global patent litigation strategy, please contact the author, our Director, IP Strategy:

 

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[1] Link to the new USPTO Motion to Amed rules – see https://www.federalregister.gov/documents/2024/09/18/2024-21134/rules-governing-motion-to-amend-practice-and-procedures-in-trial-proceedings-under-the-america

[2] Pilot program results study and final report – https://www.uspto.gov/sites/default/files/documents/motion_to_amend_installment_9.pdf

[3] https://ipwatchdog.com/2021/02/23/increased-success-rates-amending-claims-post-grant-proceedings-means-patent-litigation/id=130200/

[4] Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600, Paper 67 (PTAB July 6, 2020).

 

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