Michael Best Partner Shane Brunner was quoted in Law360’s article, “New AIA Plan May Be A Tough Path To Patent Amendments” on October 29, 2018.
The U.S. Patent and Trademark Office’s proposal to change the system of seeking patent amendments in America Invents Act reviews could give patentees better odds of success, but it is based on an accelerated time frame that may prove daunting for parties and the office, attorneys say.
USPTO Director Andrei Iancu announced the proposal on Thursday, saying that when a patent owner’s original claims are found invalid, they should have a chance to obtain amended claims. While there is currently an amendment mechanism in place, actually getting claims amended happens so rarely now that patent owners view putting in the effort to be “largely futile,” he said.
The "robust new amendment process," about which the office is seeking comments until Dec. 14, is aimed at making the ability to amend claims "feasible and meaningful,” Iancu said.
Under the plan, the Patent Trial and Appeal Board would issue a preliminary ruling on whether proposed amended claims are viable prior to the final decision in the review, and patent owners could revise their motion in response. That additional feedback should aid patentees, attorneys say, although meeting the deadlines the office has proposed will be a challenge.
“This gives a real opportunity for amendment,” said Shane Brunner of Michael Best & Friedrich LLP. “Before, it was very difficult because it was an all-or-nothing decision at the end. With two shots at an amendment, it’s really going to make amendments more likely.”
To read the entire Law360 article, click here.