Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

Intellectual PropertyFeaturesPatent Licensing and TransactionsPatent LitigationLJN NewslettersThe Intellectual Property Strategist

Amending Patent Claims in Post-Grant Trial Proceedings

By Cynthia Lambert Hardman

The America Invents Act (AIA) gave patent owners the right to move to amend their patent claims in the context of AIA trial proceedings (inter partes review (IPR), post-grant review (PGR), and covered business method patent review (CBM)). To date, however, this right has been more illusory than real because it has been exceedingly rare for the Patent Trial and Appeal Board (PTAB) to grant motions to amend. This became starkly clear when the Board released the results of its study on motions to amend, which showed that it had denied 95% of the motions included in the study. See, April 2016 PTAB Motion to Amend Study, at 4. Successful motions to amend largely have been those that cancelled claims (without seeking to add a substitute claim) — which are typically granted without substantive review, see, id. at 2 — or were agreed to by the parties as part of settling the post-grant proceeding.

Given their dismal success rate so far, many hope that the tide will turn in favor of granting more motions to amend. Indeed, as will be discussed below, the Federal Circuit is currently reviewing aspects of the Board's motion to amend framework en banc in In re: Aqua Products, Inc., Docket No. 2015-1177 (May 25, 2016).

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Beach Boys Songs Written Decades Ago Triggered Current Quarrel With Lawyers Image

There's current litigation in the ongoing Beach Boys litigation saga. A lawsuit filed in 2019 against Nevada residents Mike Love and his wife Jacquelyne in the U.S. District Court for the District of Nevada that alleges inaccurate payment by the Loves under the retainer agreement and seeks $84.5 million in damages.

Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

Transfer Tax Implications on Real Property Leases Image

The real property transfer tax does not apply to all leases, and understanding the tax rules of the applicable jurisdiction can allow parties to plan ahead to avoid unnecessary tax liability.