During the first three years of implementing the America Invents Act (AIA), Patent Trial and Appeal Board (PTAB) decision-making created a perception that a patent owner’s ability to amend claims during a post-grant proceeding was limited, at best. In 2015, legislative activity began to address this perceived problem with draft amendments to the patent statute.

While specific proposals varied, the concept of one approach was that a patent owner seeking to amend claims during a PTAB trial, could prosecute its proposed amendments like ordinary examination (or reexamination) in parallel with the underlying PTAB trial. This amendment examination process, termed an “off ramp” by some, has raised a number of policy and administrative issues. Continue Reading An Examination “Off-Ramp” For Motions To Amend Still Raises Hopes and Questions