Motions to Amend and Substitute Claims in an Inter Partes Review

Authored by Michelle Carniaux and Michael E. Sander

After the Patent Trial and Appeal Board (“the Board”) institutes a trial for inter partes review, the patent owner has an opportunity to amend/substitute the challenged claims through a motion to amend. The Board recently issued a decision on a motion to amend that appears to be intended to provide guidance on how the Board will analyze such motions, and the general requirements of such motions. See IPR2012-00027, No. 26 (P.T.A.B. June 11, 2013).

Click here to continue reading...