[Patentpractice] Amendment of Patent Claims at PTAB during trial

[David Boundy]

Look at the regs, the Trial Practice Guide
https://www.uspto.gov/patents/ptab/trials/practice-guides and the relevant
precedential and informative opinions
https://www.uspto.gov/patents/ptab/precedential-informative-decisions >
Issues specific to AIA trial proceedings > Motions to amend

https://www.americanbar.org/groups/professional_responsibility/publications/model_rules_of_professional_conduct/rule_1_1_competence/comment_on_rule_1_1
note 2 may be important.

On Tue, Dec 10, 2024 at 4:14 PM Stanley H. Kremen via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Colleagues:
>
> The PTAB instituted a trial on an IPR petition against my client’s patent.
> I would like to amend some claims. What is the procedure, and what are my
> limitations. I assume that I may only present narrowing amendments. For
> example, I want to amend one of the challenged claims which is independent.
> I assume that it is possible to place previously disclosed limitations on
> the claim, or alternatively, make the claim dependent on another
> independent claim. Am I correct?
>
> Also, may I amend the specification (no new matter)?
>
> Thanks in advance for your assistance.
>
> Stanley H. Kremen
> (Stan)
>
>
> Sent from my iPhone
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>


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