USPTO Details Options for Amending Patent Claims during AIA Proceedings

Takeaway: If you need to amend your patent claims during AIA proceedings, the USPTO has provided some available options

The USPTO released a notice dated April 16, 2019 detailing some of the available options for amending patent claims during the pendency of an inter partes review, post-grant review, or covered business method patent review (AIA proceedings). Although this notice does not modify the policies or procedures of the USPTO whatsoever, it does provide a summary of current procedures and some insight on the factors used in determining whether to stay reissue and reexamination proceedings.

Much of the notice is dedicated to explaining the processes by which a patent owner can amend the claims of a patent by filing a request for ex parte reexamination or by filing a reissue application. Importantly, the notice stresses that these actions can be taken before, during, or after an AIA proceeding. In fact, a patent owner may pursue these options to amend claims as long as they are pursued within 63 days of a final written decision resulting from these AIA proceedings.

Note: If seeking a reexamination after a final written decision, the requester must bring up a substantial new question (SNQ) of patentability. This SNQ cannot be the same question decided in the final written decision.

The publication of such a notice by the USPTO suggests that perhaps the office is encouraging more patent owners to seek amendments through these means. The inclusion of a summary of factors considered when determining whether to stay a reissue or reexam proceeding may also be intended to assuage the fear that these proceedings will be stayed in favor of the newer AIA proceedings.