[Patentpractice] Amendment of Patent Claims at PTAB during trial

[Randall Svihla]

Hi, Stan

You want to be very careful about what you do.  Practice before the PTAB in IPR trials is unforgiving.

Best regards and good luck,

Randall S. Svihla
NSIP Law
Washington, D.C.


-----Original Message-----
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Stanley H. Kremen via Patentpractice
Sent: Tuesday, December 10, 2024 4:13 PM
To: patentpractice at oppedahl-lists.com
Cc: Stanley H. Kremen <shk at shk-dplc.com>
Subject: [Patentpractice] Amendment of Patent Claims at PTAB during trial

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)


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