The Patent Office has proposed new rules that may help patent owners avoid invalidation by amending patent claims in inter partes reviews (IPRs). When IPRs first became available, patent owners criticized the Patent Office because their right to amend claims in IPRs appeared to be illusory. Motions to amend have been filed in only about 10% of IPRs, and only about 10% of motions considered on the merits have been granted. The criticism and low success rate may have stemmed from a general misunderstanding as to the burdens for such motions. The Patent Office has responded with efforts to clarify and improve the amendment standards and process.

Under the proposed rules, a patent owner seeking to amend claims in an IPR would bear an initial burden to show that the proposed amended claims are firmly based on the patent’s disclosure and would not broaden the scope of the original claims. The challenger would then bear the burden to show that the proposed amended claims are unpatentable. But regardless of the parties’ showings, the Patent Office could exercise discretion to grant or deny the motion “for any reason supported by the evidence of record.”

The Patent Office discretion is intended to address the possibility that challengers may not care to satisfy their burden in an IPR as to proposed amended claims. For example, challengers may have withdrawn from the IPR, may have settled their dispute with the patent owner, may be uninterested in proposed amended claims that would not impact their business, or may believe that intervening rights as to amended claims would protect their business.

Patent owners must still weigh the benefits and risks of amending claims. For example, when an amendment changes the scope of the original claims, intervening rights may limit enforcement of the amended claims. On the other hand, an amended claim may be more difficult for an infringer to invalidate.

With its proposed new rules, the Patent Office continues to encourage motions to amend claims. The existing guidance and pilot program are designed to encourage such motions and to maximize their likelihood of success. The Patent Office’s proposed new rules would make the process for amending claims in an IPR more reliable and readily understandable.