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Salvaging a Patent After a Post-Grant Proceeding
When the Patent Trial and Appeal Board (PTAB) decides to institute a post-grant proceeding, the subject patent is in jeopardy. Statistics and analysis show that the PTAB, which is part of the U.S. Patent and Trademark Office (PTO), has canceled a large majority of the patent claims that it has reviewed in the more than 1,000 post-grant proceedings that have been completed since the PTAB's inception in 2012. But there may be steps that a patent owner can take to salvage something from its patent, in the event that the claims challenged in the post-grant proceeding are canceled.
A Motion to Amend and Post-judgment Estoppel
If the patent owner sees at the outset of a post-grant proceeding that the challenge to its claims is strong, the patent owner might consider a motion to amend its claims within the proceeding. To be sure, motions to amend have proven to be very difficult, as the PTAB has only granted a handful of those it has considered. This difficulty is in large part due to rules that place the burden on the patent owner to demonstrate the patentability of the amended claims in the motion, which is far more stringent than an ex parte patent application process. There a patent applicant merely has to rebut any prima facie case of unpatentability that is first set forth by the PTO examiner. Further, in a motion to amend, the patent owner is usually only allowed to present one substitute claim for each claim that is being challenged in the post-grant proceeding. Thus, a patent owner's opportunity to present new claims in a motion to amend is greatly limited.
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