THE PTAB’S PRACTICE OF DENYING MOTIONS TO AMEND
The PTAB consistently espouses its position that it cannot complete proceedings within the 1 year time frame proscribed in 35 U.S. Code § 316 (“The Code”) if applicants were given full opportunity to amend their claims. While it is accurate that, according to the Code, proceedings are to conclude within 12 months; that’s not the end of the story. The Code also expressly provides that the 12 month period can be extended up to an addition 6 months for good cause.
A PATENT FOR AN INVENTION IS THE GRANT OF A PROPERTY RIGHT TO THE INVENTOR
It is difficult to argue against the proposition that the owners of an invention (“a property right owner”) should not be foreclosed from all due process and procedural rights otherwise available to all property right owners; thereby, creating good cause to extend the 1 year time frame to allow an investor to both (1) enjoy full due process and procedural rights, and (2) avoid the prejudice that attaches to the inventor when their due process and procedural rights are extinguished.
35 U.S. Code § 316 – addressing the Conduct of the inter partes review (“IPR”) process under “Amendment of the Patent” states, that “During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways”…including “For each challenged claim, propose a reasonable number of substitute claims”.
On May 09, 2016 the USPTO published a blog titled “Further Insight Provided on PTAB Amendment Motions with New Study” written by Acting Chief Administrative Patent Judge Nathan Kelley (“Kelley”). It is overview of the Study the USPTO stated “But unlike in the examination context, the PTAB proceedings must be completed within a year, and there is no time for the back-and-forth between the applicant and the USPTO that happens during prosecution”.
The above statement is troubling because the PTAB is not constrained by the 1 year time frame, given the fact that the Code provides an additional 6 months (total 18 months) for good cause.
Let’s not lose sight of the fact that there is no evidence that allowing time for “back-and-forth between the applicant and the USPTO” cannot be accomplished within the 1 year time frame, even if motions to amend were more readily available.
Allowing an inventor to enjoy the same due process and procedural rights provided to all property right owners; and, avoiding the prejudice that attaches to the inventor when their due process and procedural rights are extinguished, we respectfully suggest, meets the legal burden of showing good cause for a 6 month extension.
If 35 U.S. Code § 316 provides a patent holder with a “right” to amend “…each challenged claim, [and the right to] propose a reasonable number of substitute claims”, can the PTAB ignore this right using the 1 year time constraints as its only basis for denial?
Or, in the alternative, is the PTAB improperly interrupting the Code to provide that a patent holder’s only “right” is to file a Motion, which can be granted or denied by the PTAB?
