Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled its charge as a speedy, cost effective alternative to patent litigation. But, that is not to say that the road has been completely bump-free. As discussed previously, there has been some controversy in the early going as patentees struggle to adapt to the motion requirements necessary for amending claims before the PTAB. That is, many patentees perceive the rigid motion requirements as an unfair hurdle, justifying their criticism on the fact that the PTAB has yet to permit an amendment (save those simply cancelling claims).
This past Tuesday, an amendment finally made it through.
In IPR2013-00124 (International Flavors & Fragrances Inc. v. U.S. Department of Agriculture), the patentee (i.e., Uncle Sam) was able to substitute 19 new claims in place of the originally patented claims (original claims 1-26 were cancelled outright). While critics will certainly point out that the motion was unopposed, and was essentially a settlement by amendment (challenger was satisfied that new claims were no longer a threat and simply walked away), the development does illustrate that it is possible to present a motion to amend that is capable of passing muster. (decision here) (motion to amend here)
For a more expanded discussion of this development, and amendment options/strategies, please join me on today’s IPO Chat Channel program entitled: Amending Claims: Assessing the Options Right Now at the USPTO.