The America Invents Act permits patent owners to move to amend claims of a patent subject to inter partes review.[1] However, attempts to amend claims have been largely unsuccessful to date, and some of the hurdles patent owners face are not set forth in the rules. We first review statistics and relevant case law to survey the development of motion to amend practice, including the recent April 22, 2016, Shinn Fu[2] decision, the first decision to grant a motion to amend after guidance provided by a few notable Patent Trial and Appeal Board and Federal Circuit decisions. We conclude with recommendations and practice tips for a successful motion to amend.
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Originally published by Law360
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