During the first three years of implementing the America Invents Act (AIA), Patent Trial and Appeal Board (PTAB) decision-making created a perception that a patent owner’s ability to amend claims during a post-grant proceeding was limited, at best. In 2015, legislative activity began to address this perceived problem with draft amendments to the patent statute.

While specific proposals varied, the concept of one approach was that a patent owner seeking to amend claims during a PTAB trial, could prosecute its proposed amendments like ordinary examination (or reexamination) in parallel with the underlying PTAB trial. This amendment examination process, termed an “off ramp” by some, has raised a number of policy and administrative issues. Many of these had solutions around which broad consensus might have been reached; for others, it was less clear. At the time, the legislative effort did not mature. Since then, however, conditions underlying the effort have not abated. In 2016, the en banc Federal Circuit heard argument in In re Aqua Prods. on whether the PTAB has been wrongly placing a burden on the patent owner regarding patentability of amended claims, underscoring potential problems with the current motion to amend practice. The possible outcomes in Aqua Products, either the status quowhich motivated the earlier legislative activity, or a reversal potentially placing greater burdens on the PTAB, arguably make an alternative to the current motion to amend practice even more advantageous.

PRACTICAL LIMITS ON AMENDING CLAIMS

Congress provided in the AIA that a patentee may file a motion to amend the patent during an IPR or Post Grant Review (PGR), mandating that the Patent Office Director “prescribe regulations . . . setting forth standards and procedures for allowing the patent owner to move to amend the patent.”  35 U.S.C. §§ 316 and 326.  As interpreted by the Board, the regulations require that the patentee meet a burden to show patentability of the amended claims.  See Idle Free Sys., Inc. v. Bergstrom, IPR 2012-00027, 2013 WL 5947697, at *4 (PTAB June 11, 2013); see also37 C.F.R. § § 42.121 and 42.221; § 42.20. In practice, however, the particulars became an evolving set of requirements announced in decisions denying a motion to amend.

As a patent owner was generally allowed only one motion to amend, if that motion was denied for procedural or other reasons that the patent owner might have addressed, PTAB practice fostered a perception that patent owners could not obtain or maintain patent rights via motion to amend to which their inventions were entitled. At the same time, it was unclear if reexamination or reissue proceedings provided a meaningful alternative. PTAB panels often would stay these during a trial, delaying a patent owner’s opportunity to pursue amended claims and potentially limiting the examining corps’ ability to allow claims via an estoppel that would not have been present earlier and with which an examiner might not agree. See 37 C.F.R. § 42.73(d)(3).  At least for a period, there also appeared to be disagreement within the Office about the availability of these procedures for claims involved in a trial. The upshot of Patent Office practice, as it evolved, often was that patent quality was not being improved where it might have been by allowing the examining corps to evaluate amendments in light of evidence developed via inter partes trial.

Patent-owning stakeholders and the bar got the attention of Congress in early 2015 and draft legislation began to emerge. One bill would have required granting a first motion to amend (see S.632 — 114th Congress (2015-2016) (the “STRONG PATENTS ACT of 2015”), §§ 102(b)–(c) and 103(b)–(c)) and other draft language discussed with staffers pursued a middle ground “off-ramp” solution.

IS AN AMENDMENT EXAMINATION PROCESS A SOLUTION?

For patent owners, the “off-ramp” proposals could provide a number of benefits. One is a change of the burden of persuasion for entitlement to amended claims. Normally, an inventor may obtain patent claims for his or her invention unless the Director makes a specific rejection or objection to a claim after examination.  35 U.S.C. § 101, 131–32.  That is, the Patent Office has the burden of production of an initial prima facie case of unpatentability of a claim. See, e.g., In re Oetiker, 977 F.2d 1443, 1445 (Fed.Cir.1992).  When the same claim is presented in a motion to amend during an IPR or PGR, the patent owner has a burden to convince the PTAB panel that the claim is patentable.  See Nike, Inc. v. ADIDAS AG and 812 F. 3d 1326 (Fed. Cir. 2016); Idle Free Sys., Inc. v. Bergstrom, IPR 2012-00027, 2013 WL 5947697, at *4 (PTAB June 11, 2013).

Another potential benefit for patent owners is that members of the examining corps familiar with the art to which the invention relates might more readily evaluate patentability arguments for amendments and provide guidance on patentable claim scope. An amendment examination option also could benefit the PTAB. During an IPR or PGR, a default statutory timeline and motion to amend procedure constrains members of the trial panel from engaging in the type of dialog that occurs between an applicant an examiner to reach agreement on the patentable scope of claims, the trial panel did not have the benefit of conducting a search of the prior art as an examiner could.

Petitioners could share in some of the benefits, as well. If there are many issues and grounds on which a petitioner may oppose a motion to amend, the lone opposition brief contemplated by the PTAB may not provide it an opportunity to note those to the trial panel. An examiner, however, may see or find the same or similar issues when conducting his or her search and examination. Thus, an amendment examination process could potentially provide stakeholders a number of benefits. However, a number of policy and administrative issues lay in the details.

IS THERE CONSENSUS FOR AN AMENDMENT EXAMINATION PROCESS?

Defining the contours of an examination alternative raises a number of policy and practical administrative issues. Achieving sufficient agreement among stakeholders to promote legislative action raised a call to action for the bar. For some issues, it appears likely consensus approaches could be readily reached. Others might require more effort.

WHEN MAY / MUST A PATENT OWNER REQUEST AN AMENDMENT EXAMINATION OPTION?

A number of countervailing considerations exist for when a patent owner might begin an examination option. Completing meaningful examination within a 12-month trial period suggests a patent owner may need to present claims earlier in the trial before a motion to amend currently is due. However, advancing amendment to before the patent owner submits its response increases both practical and strategic burdens on the patent owner. Ultimately, the practicalities of timely completing examination may dictate the available timing for submitting proposed amendments.

WHICH CLAIMS

Which claims may be presented for examination raises a number of issues and, of course, may impact the time needed for examination. One issue is if amendments only to instituted claims may be presented for examination or may a patent owner seek examination for a range of differently-scoped claims. The latter may speed examination in some instances, and lengthen it in others. Some patent owners also might wish to initiate an examination option pre-institution for certain claims. Current practice only allows substitution of amended claims that are part of a trial.

CONCERNS AROUND AMENDMENTS

Currently amendments during a PTAB trial “may not enlarge the scope of the claims of the patent,” consistent with ex parte reexamination.  See 35 U.S.C. § 305.  More generally, the statue omits this limit for reissues sought within two years of the patent grant. In the case of an ordinary post-grant review, i.e., one filed within nine months of issuance, normally this will be the case.

Petitioners can raise a number of sound objections to amendments that enlarge the claims in some way during a post-grant trial. When the patent owner would have a broadening reissue option available, in any event, the ultimate substance of the claims alone may not be the paramount policy question. For instance, when the patent is being litigated, filing a separate reissue may impact the speed of proceedings in the courts and patent office, damages, and potentially estoppel arising from the PTAB trial. These concerns, and speculation of the impact they may have for patents involved in parallel litigation, may make consensus difficult for amendments of scope that differs from current practice. Patent owners entitled to pursue claims that were broader in some respect via reissue are likely to pursue that and may request that examination be combined with examination of amendments initiated during trial. What policy the statute and/or Office practice should adopt in this situation will likely require careful balancing among stakeholders.

WHAT EXAMINATION PRIORITY?

The Office currently treats the ex parte reexamination of patents as “special,” and reissue applications in non-stayed litigation with priority among “special” cases.  See 35 U.S.C. § 305; M.P.E.P. § 1442.03.  In ordinary prosecution, the Office aims to provide a final disposition within 12 months for prioritized examination under 35 U.S.C. § 111(a) and 37 CFR § 1.102(e)(1) (“Track One”) which are given special status.  See M.P.E.P. § 708.02(b).  Thus, the Office has practices and procedures in place for reexamination and reissue of patent claims within the default timeline of an AIA trial, if given special examination priority. As noted, the available period for examination of a proposed amendment during a trial depends on when the amendments are presented. It appears likely consensus could be reached for amendment examination to be prioritized to complete within the potential timeframe of AIA trials.

CONSIDERATION OF THE TRIAL RECORD

An examiner, of course, should have the benefit of the prior art and evidence and other matters related to patentability developed during the trial proceedings. What consideration he or she must or may give to it is a separate question. Given the varied possibilities, a sensible legislative prescription more specific than that the examiner should consider the trial record may be challenging.

SHOULD APPEALS BE COORDINATED?

Another administrative practicality to address is whether coordination of appeals should be a goal. In particular, should an effort be made within the Office for examination appeals to involve members of the trial panel. Separately, a question to resolve is if a subsequent Federal Circuit appeal should consolidated from both the trial and examination and, if so, the mechanics of implementing that.

STATUS OF AMENDED CLAIMS

More difficult questions arise related to the extent to which the petitioner can attack the validity of amended claims. For patents in litigation, the requirement that an inter partes review be filed within one year of being served with a complaint asserting the patent could, as a practical matter, put amended claims beyond challenge via IPR.

Sound arguments can be made that the original petitioner should have an opportunity to challenge a claim that it could not challenge in its original petition. Sound arguments also exist for the patent owner: Under the current statute, the time limits applicable to filing post-grant challenges have no specific exception for amended claims and it is not readily apparent why the manner by which an amendment came about should alter that.

THE DEBATE CONTINUES ABOUT ESTOPPEL

Another difficult policy question arising from an amendment examination option is deciding what, if any, estoppel should attach to amended claims upon completion of a trial. Petitioners can argue that no estoppel should attach for a claim they could not challenge or raise grounds against its patentability, as amended. This argument may have increased force because the current statute bars arguing a claim “is invalid on any ground that the petitioner raised or reasonably could have raised during” the proceeding. Currently, a petitioner may raise grounds in opposition to a patent owner’s motion to amend.  If amendments are evaluated solely by the examining corps, the petitioner will not likely have any direct opportunity to raise such grounds. Relatedly, an extension of the current estoppel to grounds the petitioner “reasonably could have raised” may, in this context, be even less justified.

Patent owners can, in turn, argue that there should at least be an estoppel for the scope of the original claims and issues that were raised during the examination. Further, when the patentability of an original challenged claim is upheld during trial, and an amended claim is narrower, allowing a subsequent challenge to the narrower amended claim appears to conflict with the intent of the current statute.

IS LEGISLATION NECESSARY OR DESIRABLE?

While early efforts to create an amendment examination process were legislative, depending on the contours of the process and its effects, legislative action may not be necessary.  As noted above, Congress granted the Director substantial authority to “prescribe regulations . . . setting forth standards and procedures for allowing the patent owner to move to amend the patent.” Many of the changes to current practice to implement an amendment examination process may be possible through rulemaking. Whether that is the most desirable approach is a separate question. The Federal Circuit in Aqua Products may conclude that the current PTAB practice for deciding motions to amend wrongly placed a burden on the patent owner without a formal rulemaking, necessitating revisiting the issue in the Patent Office. However, the legislative process may be able to better promote uniformity and predictability through statutory mandate, and is an established vehicle for vetting and balancing stakeholder interests on a number of difficult policy issues. Whether legislative efforts can respond quickly enough to interest from stakeholders remains to be seen, however.

A presumably important balancing Congress made when establishing post-grant challenges in the AIA was that patent owners would be given a chance to amend claims. Patent owners seeking patent rights for their inventions, the public seeking patent quality, and the Office seeking efficient administration of amendment practice should be able to reach consensus on improvements to the amendment process in post grant trials. Providing an examination option for amendments may be a vehicle for that consensus to be reached that is both speedy and just.