[Patentpractice] Amendment of Patent Claims at PTAB during trial

[Rick Neifeld]

Stan - New rules governing motions to amend were promulgated 9/18/2024,
see  "Rules Governing Motion To Amend Practice and Procedures in
Trial Proceedings Under the America Invents Act Before the Patent Trial
and Appeal Board," 89 FR 76421 (9/18/2024).  You better read that, in
addition to new rule 42.121.

Prior to filing, you must confer with the Board, and you really really want
to be sure to ask for preliminary guidance.






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
> --
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-- 
Best regards
Rick Neifeld, J.D., Ph.D.
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032
Mobile: 7034470727
Email: RichardNeifeld at gmail.com;
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