The USPTO has released guidance on amending the claims of a challenged patent in an AIA proceeding. Several key points are below:
- A patent owner in an inter partes review (IPR), post-grant review (PGR) or covered business method patent review (CBM) first must “move” to amend the claims, unlike regular prosecution or during a reexamination or reissue proceeding where proposed amendments are entered automatically.
- The patent owner in an IPR, PGR or CBM proceeding bears the burden to show that the proposed substitute claims are patentable, unlike during prosecution or a reexamination or reissue proceeding where the examiner has the burden to establish the unpatentability of any claim.
- The Board in an IPR, PGR or CBM proceeding does not conduct any prior art search or perform an examination.
To read the entire USPTO post, click here.
For more information on inter partes review, click here.
For more information on post-grant review, click here.