The Limited Ability of a Patent Owner to Amend Claims and Present New Claims in Post-Grant and Inter Partes Reviews

Fitzpatrick, Cella, Harper & Scinto's Patent Prosecution Update
May 2012

The Leahy-Smith America Invents Act (AIA) includes two new post-grant proceedings for challenging the validity of a patent: post-grant review and inter partes review. These new review proceedings will differ from the current inter partes reexamination proceeding in many aspects. One significant difference between the new inter partes and post-grant reviews and inter partes reexamination will be the extent to which the patent owner is able to present amended or new claims during the course of the proceedings. While the current inter partes reexamination rules give a patent owner abroad right to present amended and/or new claims, the ability to present amended and new claims in post-grant and inter partes reviews will be significantly more restricted.

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