Patent Office Defends PTAB Denying Motions to Amend

uspto-building-angle-335 copyYesterday the Director’s Forum, a blog run by the United States Patent and Trademark Office, published a guest article written by Nathan Kelley, the Acting Chief Administrative Patent Judge. In the post Kelley explains that there has been great public interest on motions to amend in post grant administrative trials, which led the Patent Office to conduct a study on motions to amend.

Of those 192 cases with motions to amend the Patent Trial and Appeal Board (PTAB) had occasion to review only 118 motions, which is in part due to settlement prior to decision on the motion in a number of cases, or the motion being contingent and becoming moot because the panel found the original claims patentable.

Of the 118 motions to amend, only six were granted or granted-in part by the PTAB, which corresponds to a paltry 5%. Some 94 motions to amend were denied on specific grounds of patentability and 22 were denied solely on procedural grounds.

If amendments to claims in post grant administrative proceedings would not place the claim in condition for allowance it is hard to fault the PTAB for refusing to allow the amendment. But if nearly 80% of the motions to amend are being denied for legitimate substantive reasons why does the Patent Office continue to argue, even excuse the practice of near universal refusal to amend claims in post grant proceedings by saying they have only a limited amount of time for each case and they simply cannot allow amendments?

No Time for Back-and-Forth Examination

Kelley writes: “[U]nlike in the examination context, the PTAB proceedings must be completed within a year, and there is no time for the back-and-forth between the applicant and the USPTO that happens during prosecution.”

The position taken by Kelley here is not new. This is the position taken by the Patent Office since the beginning. Essentially, the PTAB is telling the patent owner — sorry, we just don’t have the time it takes to allow you to amend so we won’t. A terrible reason to refuse a patent owner the ability to amend, but this has consistently been the justification provided by the Office.

The PTAB believes they can tell patent owners that they cannot amend patent claims being challenged in post grant proceedings because they interpret the statute allowing amendments to merely provide a right to ask for an amendment, not the right to amend.

35 U.S.C. 316(d) says: “During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent…”

What good is a right to file a motion to amend if there is not a right to amend? Clearly, this is a misinterpretation of the statute — and I say that regardless of the fact that the Federal Circuit has ratified this misinterpretation. That the Federal Circuit acquiesced to the Patent Office interpretation merely means they too are misinterpreting the statute. Even a casual perusal of the legislative record will show over and over again how Members of Congress quieted the fears of patent owners by explaining patent owners facing a challenge would have the right to amend claims. No one was trying to take patents away, they just wanted to make sure claims were of appropriate scope. Of course, that isn’t how post grant proceedings have played out.

The real problem with the PTAB position relates to the false claim that the Patent Office couldn’t possibly complete the proceedings within the year time frame required by the statute if they were to give the applicant a full and fair opportunity to amend claims using a back-and-forth prosecution process between the applicant and the USPTO. Indeed, the Patent Office uses this one-year time frame as an excuse for every one-sided procedural rule that has been implemented against patent owners.

Simply stated, the Patent Office is wrong, and it is getting quite tiresome to hear such a bogus argument over and over again. The fact that it is said often does not make it any truer than the first time it was said. It is a convenient excuse used by the Office that has allowed them to justify a completely one-sided process against the patent owner.

Up to 18 Months to Complete Proceedings

You might not know it listening to the Patent Office, but the statute actually gives the Patent Office up to 18 months to reach a final determination. According to 35 U.S.C. 316(a)(11), ordinarily proceedings are to conclude within 12 months, but can be extended up to an additional 6 months for good cause. If providing a property owner with proper due process and procedural rights before stripping a vested property right (see 35 U.S.C. 261; yes, patents are property) isn’t “good cause” I guess I don’t know what is “good cause.”

It is also incorrect for the Patent Office to say, suggest or claim that there is no way to expedite the prosecution process. The Office already allows for examination to be expedited, including under the option known as prioritized examination (sometimes referred to as Track One). Prioritized examination moves an application to the front of the line in exchange for the payment of an extra fee. By paying the extra fee, which presently ranges between $1,000 to $4,000 depending upon entity status (see USPTO fees), the applicant is guaranteed a patent decision within 12 months. In many if not most cases the patent decision is reached within 6 six months or less. In fact, so few people use prioritized examination that the length of time an applicant must wait for the patent to actually issue after receiving a notice of allowance is longer than the length of prosecution with the examiner.

If the Patent Office can rush a patent application along with prioritized examination and engage in a full prosecution of an application within a few months there is absolutely no reason why the time limits placed on completing post grant administrative proceedings should be a legitimate excuse for the PTAB to refuse a full and fair opportunity to amend. The fact that the Patent Office chooses not to avail itself of the extra 6 months allowed by the statute to complete proceedings is on the Office and should not prevent the patent owner from receiving a procedurally fair process.

The Patent Office complaining that they don’t have enough time to give applicants an opportunity to fully and fairly amend in a back-and-forth manner akin to prosecution with the examiner is rather insulting. Patents are supposed to be presumed valid once issued (see 35 U.S.C. 282). The Patent Office refuses to provide a presumption of validity when patents return to the Office and have long argued that they don’t have to because when a patent comes back to the Office it is subject to further prosecution. That isn’t the case in post grant administrative proceedings. In fact, all we hear from the Patent Office is why they can’t, don’t or won’t provide further prosecution.

If providing back-and-forth prosecution is too much of a burden then the least the Patent Office can do is presume the patents that the Office itself issued are valid. Of course, if there is no right to amend because back-and-forth examination is too burdensome then the Office shouldn’t be using the broadest reasonable interpretation (BRI) standard either.

PTAB Would Have to Allow Unexamined Claims

In any event, Kelley goes on to explain why the Patent Office can’t possibly allow for amendments to claims as a matter of right: “[I]f the PTAB grants such a motion, the new claims will issue (and be enforceable against the public) without any examination to ensure compliance with the statutory requirements for patentability.”

Frankly, this argument sounds a lot like the specious arguments you hear from government officials during a budget crisis, which might go something like this — we don’t have enough revenue, so either we raise taxes or we are going to have to close fire houses, lay off police and/or release inmates from prisons. This type of scare tactic is as predictable as it is insulting. Sure, let’s just stop providing those services that are at the core of what government is supposed to do so the people government is supposed to represent feel pain! As if there is no other spending on discretionary programs that could ever possibly be cut before releasing violent criminals into the community would make sense.

If the Patent Office wants to grant motions to amend in post grant administrative proceedings without ensuring compliance with the statutory requirements for patentability that would be just about as stupid as releasing violent felons or laying off firemen or police.

Claiming that the only option the PTAB has is to deny motions to amend or to allow unexamined patent claims to be foisted on the public is simply not true. This artificial creation of a Hobson’s choice ignores the obvious real solution. The Patent Office should do its job.

The Patent Office has 6 additional months to complete proceedings that they don’t seem to want to use. The solution is to use the time given to the Office by the statute rather than claim there is some artificial deadline that doesn’t actually exist. The fact that they don’t want to use those additional 6 months shouldn’t create a crisis situation for patent owners, who actually are presumed to own a valid property right that someone is trying to take away.

The fact that the Office can’t figure out how to accelerate or prioritize an amendment process for patents under review at the PTAB is nothing short of breathtaking given they have figured it out elsewhere. With the speed at which prioritized examination operates there really is no reason why the Office would even need to tap into the additional 6 months available in many, if not most cases.

Only 50 Motions to Amend a Year

Finally, Kelley takes issue with those who say there are so few motions to amend because the PTAB record on allowing just motions is so abysmal. Kelley points out that this year the PTAB is on pace to receive 50 motions to amend, which is about the same number received in the first year. Therefore, Kelley doesn’t think there is any merit to the argument that so few motions to amend are filed because only 5% are granted.

According to the motion to amend study there have been 4,850 petitions filed seeking the institution of a post grant administrative proceeding, and only 192 motions to amend have been filed, with only 50 per year being filed? If Kelley is right and there are never going to be many motions to amend filed it is utterly unbelievable that the Patent Office would cling to the nonsensical argument that they can’t possibly provide those 50 patent owners a year with an honest, full and fair examination of amended claims. For crying out loud, the Patent Office is in the business of patent examination and we are taking about 50 amendments a year that they say they can’t handle with special dispatch? That is pathetic.


Don’t let the Patent Office fool you. If they wanted to offer patent owners procedural opportunities to fully and fairly engage in an amendment process for patents under review by the PTAB they could. The truth is they don’t want to offer patent owners such a full and fair opportunity to amend claims, so they don’t.



Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

40 comments so far.

  • [Avatar for Anon]
    May 13, 2016 05:44 am

    Mr. Curry – please stop the deflections.

    I am perfectly “chilled out” and there is no concern whatsoever that I am going to lose my hair over this.

    On the other hand, you still seem recalcitrant about accepting the lesson that I have provided to you.

    This point has nothing to do with “sense of humor” (which by the way, I have) nor “working in a big law firm” (which by the way I have).

    I suggest that your continued protestations – growing ever more feeble as they are – simply be (pardon the vernacular) sh1tcanned and that you recognize the zero-sum ALL applicant basis that is in fact the structure of the USPTO.

  • [Avatar for Stephan Curry]
    Stephan Curry
    May 12, 2016 11:22 pm

    Chill out, Anon.
    you will lose your hair and grow bald by being so uptight.

    I am over 50 and have a full head of non-gray hair. You have never worked in a big law firm, have you, Anon? you have no sense of humor whatsoever.

  • [Avatar for Anon]
    May 12, 2016 09:20 pm

    Mr. Curry,

    Knowing something (and attempting to educate you) is a far cry from a “know-it-all” and I find your rather feeble attempts to attack what I know by attempting to personalize my knowledge as something “too much” simply misses the point of our conversation.

    With all due respect, may I suggest that you grow up and appreciate that I have taken the time to explain something that you had no clue about and suggested ways that you could be a more effective spokesperson for thing you evidently have strong emotions for.

  • [Avatar for Stephan Curry]
    Stephan Curry
    May 12, 2016 08:11 pm

    then Anon since you are such a know it all, why don’t you lobby to be the next USPTO Director. that job is waiting for you in January.

    let’s see if you can fix the mess that the Patent Reformers did since you are such an expert in everything.

  • [Avatar for Anon]
    May 12, 2016 07:33 pm

    Mr. Curry, – no “diversion” here from me.

    My point is simple and direct – backed with an understanding of the budgeting system in place for the USPTO and how executive agencies – particularly the USPTO – are constructed and run.

    The more you struggle against the point I provided – the more “diversion” you yourself create.

    I should be the one becoming exasperated with your attempts to cling to a meme that is less than stellar.

  • [Avatar for Stephan Curry]
    Stephan Curry
    May 12, 2016 06:51 pm

    Anon @34

    oh my God. you always try to divert on a key point. whatever, dude.

    I suppose your clients are Not complaining about the outrageous USPTO fees, particularly those who have been applying for patents since the 1970s and 1980s.
    Lemley has the USPTO where he want the Office, high fees to discourage patent application filings.

  • [Avatar for Anon]
    May 12, 2016 06:09 pm

    I was trying to be kind with recognizing your limited point.

    I then went further and tried to educate you as to one portion of the larger budgeting system, and why the limit on your point was so small.

    Please do not gloss over these things and turn around and claim “no proof.”


  • [Avatar for Stephan Curry]
    Stephan Curry
    May 12, 2016 03:46 pm

    Once again, I advise you to not speak so glibly about things that you lack knowledge of, as even though you may mean well, such speaking out of turn lowers your overall credibility.

    Hey man, I was the one who pointed out that maintenance fees are effectively property taxes unknown to you, so you have not proven yourself to be a know-it-all either and you do lessen your overall credibility once in a while in this forum. so you are not the only Einstein in the forum.

    i don’t like LeBron (can you imagine if was running the USPTO with his “big” head? oh wait, his female version is doing so).

  • [Avatar for Anon]
    May 12, 2016 03:15 pm

    Mr. Curry,

    I do see your analogy of maintenance fees to property taxes, and concede that (limited) point.

    However, the rationale for the setting of maintenance fees is probably something that you are not aware of.

    The actual “cost” involved from the standpoint of the Office is essentially “nil.”

    The Officr is required – under law – to be a “zero sum” budgeting entity. In other words, the “surplus” from any one action is only “allowed” to the extent that such offsets actual costs elsewhere.

    I will emphatically agree with the view (perhaps one you might have), that the explicitness of this – and the verification – has been sorely lacking.

    But notwithstanding that discretion, the bottom line is that a policy choice was made to shift cost to the after grant realm.

    In this context, “property tax,” suffers.

    Part of the policy does sound in “value of use,” and that too is deliberate. The policy is aimed (akin to other property law concepts) of “clearing” those things lying fallow.

    So while it is perfectly still up to the patent owner to do absolutely nothing for the entire term of the patent; there is an increasingly graduated cost of doing so, with the intent for a person to abandon their justly earned (but not earning a current payback) property and thus turn that property over to the commons early so that others may FREELY use that item placed in the commons.

    Once again, I advise you to not speak so glibly about things that you lack knowledge of, as even though you may mean well, such speaking out of turn lowers your overall credibility.

    PS – I am a Cav’s fan and I am looking forward to a rematch – who now owns the record for Three’s in a playoff game?

  • [Avatar for Stephan Curry]
    Stephan Curry
    May 12, 2016 12:25 pm

    anon@29 By focusing on the particularity, you more effectively stress the fundamental unfairness and penalty being imposed on the system that is meant to be a boon for this country (talk about killing the golden goose…)

    wrong, buddy.
    High USPTO payment fees (effectively, high user/purchaser taxes) discourages patent application filings (discourages purchases of USPTO services on patents) which is bad for America. I think that is what Lemley Chien Lee et al. are wanting secretly.

  • [Avatar for Stephan Curry]
    Stephan Curry
    May 12, 2016 12:22 pm


    you own a house, correct? you pay property taxes twice a year (or once a year) depending on your location or else the county will sell your house and you will lose it.

    do not call patent maintenance fees as not effectively property taxes

  • [Avatar for Anon]
    May 12, 2016 12:14 pm

    Patents are not “sales,” so the comment about “basically sales tax” is lost on me.

    Further, I would not so generally associate the term “tax payer” with any innovation-based “tax.” That sends the wrong message (all of us are “tax-payers” – but not all of us also engage in the innovation system). Saying “tax-payer” actually lessons the umbrage the innovation community should be taking when innovation proceeds – paid for specific innovation tasks – are instead plowed into the “general tax” coffers.

    Just think of the possible system improvements that could be undertaken if the sum total of diverted funds were returned to their proper place?

    The “tax payer” umbrage angle has an historical pedigree, but you risk being not nearly on point or effective in wanting to borrow that meme. Perhaps being more particular in that this is an innovation tax paid for solely by those willing to use the patent system (in contrast, those depending on Trade Secrets pay NO such “innovation tax”).

    By focusing on the particularity, you more effectively stress the fundamental unfairness and penalty being imposed on the system that is meant to be a boon for this country (talk about killing the golden goose…)

  • [Avatar for Stephan Curry]
    Stephan Curry
    May 12, 2016 11:55 am

    @25 Curious May 12, 2016 10:53 am
    I would like to remotely send a punch in the face at the dude or dudette for creating an Anti-patent Monster.
    It really wouldn’t matter … Google would have found another Anti-patent Monster to take her place

    point taken. but this woman likes to talk and talk. a typical patent attorney will just take the google job, get their millions of dollars in stocks and salary and then job hop to the next job after the next few years, and won’t keep talking about how our great American patent system needs Drastic re-legislating because we are not innovative enough.

    you are a patent attorney, so you probably will just take your millions dollars of google stock options and fade into the sunset, rich and lazy.
    Who trained her in patent prosecution at Fenwick?? confess, people.
    also, did you all notice that non-sport fans make bad patent strategists? just saying.

  • [Avatar for Stephan Curry]
    Stephan Curry
    May 12, 2016 11:49 am


    thank you for your response, Sir.

    regarding being passionate, well the anti-troll preachers said the patent system is broken. so we can respond with equal puffery.

    regarding the tax issues, well, filing fees are effectively sales tax and USPTO maintenance fees are effectively property taxes. So we the tax payers are effectively paying for rising “taxes” to support the USPTO. Unlike the big bang where something comes from “nothing” (not really nothing), USPTO funds do not come from nothing.

  • [Avatar for Anon]
    May 12, 2016 11:09 am


    You look for fine data for “proof,” when what you should be looking at is the macro process of the entire USPTO budget.

    In other words, I need not “prove” what is self evident to anyone that understand the bigger picture of the USPTO budgeting process.

    There is zero taxpayer involvement.

    Quite in fact, there is a heavy effective innovator TAX due to the very large bleeding from what innovators have paid into the USPTO coffers being “appropriated” into the general tax buckets.

    Being ardent and passionate is fine, my friend, but when that passion shows in you saying things that are clearly not true, you diminish your credibility substantially.

    May I suggest that for those things that you do not know, that you modify your approach and try to come across less dogmatic?

  • [Avatar for Curious]
    May 12, 2016 10:53 am

    I would like to remotely send a punch in the face at the dude or dudette for creating an Anti-patent Monster.
    It really wouldn’t matter … Google would have found another Anti-patent Monster to take her place.

    Just like there are plenty of patent litigation attorneys working for (as?) patent trolls who are willing to give the whole patent system a bad name to make a quick buck, there are plenty of patent litigation attorneys working for the anti-patent crowd who are willing to burn down the whole patent system to save their serial-infringer clients a buck. Together they are sullying this great patent system of ours.

  • [Avatar for Stephan Curry]
    Stephan Curry
    May 12, 2016 10:43 am

    @10 Rasmus Dupont May 11, 2016 5:35 am
    Looking at EPO opposition proceedings, amendments in post grant proceeding does not seem to be that difficult.

    it is not difficult from my experiences recently and in the past. it is easy to amend post grant in the EPO. your euro foreign associate might even be good in suggesting amendments

    There is such a disparity of day and night of fairness and unfairness to patentees between the EPO post grant challenges and PTAB post grant challenges. the ptab is so unfair.

  • [Avatar for Stephan Curry]
    Stephan Curry
    May 12, 2016 10:01 am


    is that why the PTAB won’t allow amendments in most cases and won’t exercise it’s 6-months window discretion, because there is not enough funds from fees?
    if so, then patentees are screwed here also. this has to raise one or more additional disturbing issues.

  • [Avatar for Stephan Curry]
    Stephan Curry
    May 12, 2016 09:55 am


    Prove your claim, Sir.
    show us the breakdown and that the PTAB costs/salaries/expenses are sufficiently covered by the fees and not being partly supported by tax dollars

  • [Avatar for Anon]
    May 12, 2016 06:39 am

    without greatly increasing USPTO costs which us tax payers are Paying for (people, the salaries of the PTAB are being paid by your Tax dollars).

    No, Mr. Curry, that is just not true.

    The entire USPTO budget is user fee based. That includes all PTAB costs, and yes, that includes salaries.

  • [Avatar for Stephan Curry]
    Stephan Curry
    May 12, 2016 12:48 am

    those patent reformers such as Lemley and fenwickers like Chien and Lee thought that the only way to filter out “bad” patents is by pushing for the AIA and post grant trials which have led to bad unintended consequences and reverse trolls like Kyle Bass and the meltdown of our american software industry and drug/biotech/pharmaceutical industries.

    The patent reformers could just have told the politicians to just increase the search/exam time of Examiners, and that would prevent most bad patents without changing our Patent Statute which was good in fostering innovation prior to the AIA and without greatly increasing USPTO costs which us tax payers are Paying for (people, the salaries of the PTAB are being paid by your Tax dollars). Michelle Lee conveniently forgets that our patent statute Triggered the internet boom which made all Big Law associates to be rich (Chien was still in school during the internet boom so she is clueless on how the patent statute did jump start innovation prior to the AIA). Lemley is a non-engineer and so he should not even be talking about semiconductors and computers on the claim level. Lemley dreams to be the next Don Chisum but that ain’t going to happen.

  • [Avatar for Night Writer]
    Night Writer
    May 11, 2016 11:44 pm

    @15 Yea! Someone else gets what the federal trade secret act is going to do. I can’t believe that the patent people don’t get what this is going to do. I remember when the AIA was about to be passed I interviewed with supposedly the best IP boutique in the country. The hiring manager asked me what I’d like to focus on. I said IPRs. I said as soon as this passes in no time post-grant reviews are going to swamp patent law. He laughed at me like I was an idiot and didn’t hire me.

    Now a repeat. Can’t you guys see what this is going to do?

  • [Avatar for Stephan Curry]
    Stephan Curry
    May 11, 2016 06:08 pm

    nat scientist@15
    who trained her anyway in patents at Fenwick anyway?
    I would like to remotely send a punch in the face at the dude or dudette for creating an Anti-patent Monster.

    it is total blitzkrieg against the originally-strong American patent system. the Patent reformer weakened the patent system by multi-prong attacks via the AIA, the new federal trade secret act, many judges wrongfully brainwashed into thinking that patent infringement lawsuits are bad, and lobbying and other k-street activities that are Anti-Patent, thanks mostly to Google’s lobbying and planning by googlers and Lemley.

    The new federal trade secret act will discourage employee mobility and will put a highly chilling effect on what made America great: this new federal trade secret legislation will put a chilling effect on people leaving big companies like google and will discourage them from forming startup. startups made America/silicon-valley to be great. now startups will be discourage until Google implodes within 5 years and all of those Googlers will then see their $200 Million worth of stocks dwindle to $20million. you all Googlers who are gung-ho on the new trade secret act, your stock worth will dwindle in the near future.

    why are these Patent Reformers so determined in totally overhauling the IP system at once, when our IP system has fostered innovation. The Honorable Todd Dickenson drove patent attorneys crazy by always changing the USPTO website UI, but at least Todd did not promote patent legislation and trade secret legislation that will put a Chilling Effect on employee mobility/startups which foster innovation and is not suspected of being Anti-patent.

  • [Avatar for nat scientist]
    nat scientist
    May 11, 2016 03:05 pm

    Justice Breyer would then find “Billions and Billions” of bogus claim amendments and thankfully SCOTUS has Michelle Lee to prevent that deluge of disruption from happening.
    One shovel, not two is the best way to wipe them away.

  • [Avatar for Paul Cole]
    Paul Cole
    May 11, 2016 02:30 pm

    Public interest should overwhelmingly value just outcome over administrative convenience.

    In any contested proceedings, the public interest is that:

    (a) patently valid subject-matter should be protected; and
    (b) patently invalid subject-matter should be cancelled.

    It is manifestly impossible for these objectives to be reached without generous opportunities for amendment. If new prior art surfaces that renders only part of the claimed subject matter validly patentable, then the patentee should not be denied the opportunity to consider his or her position and amend down to the claims that are maintainable. If there is valid subject-matter and the patentee is denied the opportunity to amend, then it is beyond question that justice is denied.

    In Europe amendment happens as a matter of routine, and the EPO Examining Divisions and Appeal Boards cope with the amendments without difficulty. You can even amend your claims at the hearing stage, and this is a frequent, not a rare, occurrence in European opposition proceedings.

    So why the hassle in the US? Are the US patent judges less capable and less well-trained than their counterparts in Europe? Why can they not do their jib as competently and efficiently as their European counterparts? Possibly someone would like to ask Michelle Lee that question.

  • [Avatar for SJE]
    May 11, 2016 02:21 pm

    If the PTAB is saying that it can’t “examine” the claims, then it should not be applying the claim construction standard used for examination.

  • [Avatar for Night Writer]
    Night Writer
    May 11, 2016 01:32 pm

    I agree Gene they could figure out how to do it. But, I think they would have to rearrange the points the patent judges get per IPR if amendments became part of the process. I also think that amendments add all sorts of complexity to the process. You write the petition to invalidate their patent, they then amend to just get over your art. Is that it? Maybe it should be. Maybe that would be a good process. If they want another shot at your claims, then have to file another IPR.

    Anyway, I think it would have to be played out to figure out all the extra complexities and rules that would have to be determined. I think amendment would make it a fairer process (and a more healthy one for the patent system.) Of course, what every big NPE does now is just keep the application alive so they can write claims based on the IPR in a continuation.

  • [Avatar for Gene Quinn]
    Gene Quinn
    May 11, 2016 09:49 am

    Night Writer-

    Everything I’ve heard from the USPTO is in line with what you say about them saying they don’t have time to deal with amendments. Kelley’s article says as much when he says there just isn’t time to engage in the back-and-forth amendment process. This same rationale is frequently relied upon by USPTO representatives when they speak at industry events.

    It is a bogus reason in my opinion. We know how fast examiners handle prioritized examination and we know that the USPTO has an additional 6 months for “good cause.” For reasons known only to the USPTO they do not want to tap into that additional 6 months. If not having enough time to do their job isn’t “good cause” then what is?

    The Patent Office doesn’t want to allow amendments. If they wanted to allow amendments they clearly could figure it out.


  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    May 11, 2016 08:07 am

    Gene makes some good arguments here, but also note the strange fact found in this same study only about 10% of patent owners in IPRs even TRY to amend any of their claims?
    Surely the damages recovery time period impacted by the “intervening rights” statute is not as dangerous as the risk of losing ALL claims when faced with the previously-undistinguished new and better patent or publication prior art most IPR petitioners thoroughly dig up and cite in claim charts? Is part of the explanation provided in Gene’s just-prior blog on inadequate specification support for claim amendments?

  • [Avatar for Roger Meyer]
    Roger Meyer
    May 11, 2016 07:53 am

    Back when the AIA was being drafted, WH and Congressional reps were concerned about an ultimate Constitutional challenge to the law. They added the possibility of amendment during PTAB trials so as to differentiate the procedure from a trial in an Article III court. Not much thought or concern for the amendment process itself.

  • [Avatar for Rasmus Dupont]
    Rasmus Dupont
    May 11, 2016 05:35 am

    Looking at EPO opposition proceedings, amendments in post grant proceeding does not seem to be that difficult.

  • [Avatar for Curious]
    May 10, 2016 10:11 pm

    I was told that overwhelmingly the reason they don’t amend is they don’t have the time to deal with it.
    So … it boils down to they don’t want to do their job. Another reason why many people have such a low opinion of the government. Priceless.

  • [Avatar for Ned Heller]
    Ned Heller
    May 10, 2016 07:20 pm

    I will say this once more, but BRI is justifiable only with respect to unissued claims. The point of BRI is clarification. Clarification is made by amendment.

    With an issued patent, its is the validity of the claims that are at issue over the prior art, not whether they are clear. The statute says so. But the PTO from the 1980’s treated issue patents as applications. No presumption of validity. No giving reasonable doubts to the patent owner. Instead, we have gotten decades of aggressive claim construction designed to invalidate. Everyone who has participated in the process knows of what I speak.

    Why the PTO would even consider treating issued patents with such disrespect is an interesting question in itself. But they have and continue to so do. Because of this, only a complete fool, or an serial infringer, would trust the PTO to treat a patent owner with respect because they are the owner of property that cannot effectively be enforced while they dither, and where amendments cause the loss damages while the life of the patent dribbles away. Expenses, great expenses, long delays, abuse, and no respect.

    The entire patent bar needs to rise up against this. But, then there is the infringer bar that like things the way they are. We know who they are.

  • [Avatar for Night Writer]
    Night Writer
    May 10, 2016 06:12 pm

    I admit I have inside information on this one. I was told that overwhelmingly the reason they don’t amend is they don’t have the time to deal with it. Nothing more. That is it.

  • [Avatar for anony]
    May 10, 2016 05:14 pm

    Right on Gene. Unfortunately, I don’t think logic will prevail in this administration as the underlying policy is to undermine certain ‘non-legitimate’ patent rights (patents owned by non-favored parties) and not to actually interpret and follow the law in a fair and impartial manner. I’m not even sure anything will change even if BRI is dumped because the PTO will get to the same goal using different means. I mean, look at what they do in the face of a statute that requires a presumption of validity and a Supreme Court case requiring clear and convincing evidence.

    The only thing that can help now is a unconstitutionality decision and change of administration. I voted for Obama for change and I’m thinking Trump now. As unpredictable as he is, at least his administration won’t be run by Google. It can’t get worse.

  • [Avatar for That sounds (il)logical]
    That sounds (il)logical
    May 10, 2016 01:53 pm

    @Curious – that can’t be right because the Patent Office promotes patents and wouldn’t want to rig the system against the patentee. Why else would there be so many people in the White House and leadership at the DoC with ties to Google. Oh wait…

  • [Avatar for Curious]
    May 10, 2016 12:08 pm

    If the USPTO doesn’t think it doesn’t have time to “examine” amended claims, then don’t apply BRI — apply the standard used in Federal Courts. BRI is both based and conditioned upon Applicants’ ability to amend the claims.

    Don’t swear up and down to the highest court in the land that Applicants (actually Patentees) have the “ability to amend” and thus BRI is justified and then later say “[I]f the PTAB grants such a motion, the new claims will issue (and be enforceable against the public) without any examination to ensure compliance with the statutory requirements for patentability.” While there may be better examples, but this has got to be one of the best examples of the phrase “talking out of both sides of your mouth.” The government pulling this type of BS is why many people have such a low opinion of the government.

    Unless the goal is to rig the system against patentee, the solution is pretty simple — stop applying BRI during IPRs.

  • [Avatar for ValuationGuy]
    May 10, 2016 11:14 am

    Excellent rebuttal Gene…..hope it can get wider distribution within the IP community to counter the PR pieces being disseminated by the PTO’s allies in hope of swaying votes in Cuozzo Speed (and the possible Interval Licensing LLC) case(s) before the decision is written and distributed.

  • [Avatar for Ken]
    May 10, 2016 09:42 am

    I hope that, if the Supreme Court upholds BRI in Cuozzo, that they at least “condition” such a ruling on the expectation that there will start being meaningful opportunity to amend in IPR (though I don’t know if that might be dicta).

  • [Avatar for EG]
    May 10, 2016 07:36 am

    Hey Gene,

    You’re argument that the PTAB provides a feeble defense for its abysmal and persnickety view on motions to amend in IPRs is spot on. IPRs were a bad idea to begin with, and as implemented, have simply shown how awful they are. IPRs should be “torched” as soon as possible