[Patentpractice] Amendment of Patent Claims at PTAB during trial

[Rick Neifeld]

Stan could move to avoid having to have backup counsel, but even that takes
time and effort. (And lacking PTAB experience, I would not suggest doing
that.)
Rick


On Wed, Dec 11, 2024 at 10:42 AM Randall Svihla via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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)
>
>
> Sent from my iPhone
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