Written by Brandon Zuniga
Do you have an issued patent? Are you involved in an inter partes review proceeding (IPR) before the Patent Trial and Appeal Board (PTAB)? Given the benefit of hindsight, do you wish you could make a few amendments to your patent claims? If you answered yes to any of these questions, you have options for amending patent claims.
What Are My Options for Amending Patent Claims?
You might benefit from the reexamination or reissue procedures that are available to patent owners. Generally speaking, reexamination is a relatively limited procedure that is useful to address prior art concerns.
A request for reexamination of a patent can be filed at any time during the life of the patent. However, it cannot be used to broaden the claims of the patent. By comparison, the reissue procedure can be helpful to address a much broader range of issues. Furthermore, a reissue application can be used to broaden claims if filed within two years of the grant date of the original patent.
Both reexamination and reissue procedures can be useful tools for patent owners involved in PTAB proceedings. As recently explained by the United States Patent and Trademark Office (USPTO), both procedures can be used to amend a patent that is the subject of an IPR proceeding.
For more information, see the USPTO’s notice. Given that the approval of amendments is far from guaranteed during an inter parties review proceeding (IPR), pursuing a reissue or reexamination can offer significant advantages.
Do You Want to Speak to a Registered Texas Patent Lawyer?
Ultimately, whether you are planning to sue a patent infringer or whether you are already defending the validity of your patent during a PTAB trial, do yourself a favor and consider whether claim amendments could strengthen your patent.