In the America Invents Act (AIA), Congress gave the U.S. Patent Office the power to correct patent claims in inter partes review. Congress also require the Patent Office to issue procedural rules setting forth how patent owners could narrow their claims. But the Patent Office elected to address motions to amend on a case-by-case basis—rejecting almost half of all motions to amend for failure to comply with a non-precedential procedural requirement. The U.S. Supreme Court recently found that the purpose of inter partes review is “reexamination.” But the Patent Office has not been examining proposed claims. The Patent Office has instead been placing the burden of examination on patent owners and petitioners—neither of whom necessarily serves the public interest. The U.S. Court of Appeals for the Federal Circuit recently reversed the rejection of a motion to amend as arbitrary, and, in In re Aqua Products, Inc., will soon consider en banc the role and burden of the entities involved in inter partes review as to motions to amend. The stage has been set for a change in Patent Office treatment of motions to amend.
Change Anticipated in Uncertain Requirements for Motions to Amend Claims in Inter Partes Review