PTAB Judge Issues Guidance on Amending Patents Following Circuit Court Decision

The chief administrative law judge of the PTO’s Patent Trial and Appeal Board issued guidance to holders on how to amend their patents after being challenged with an inter partes review.

Brand-name and generic drug companies often are involved in such challenges when the PTAB is called to settle patent disputes in addition to or instead of more costly and time-consuming federal litigation.

The memo follows a Federal Circuit decision directing the office to allow defenders to propose substitute patent claims, without being required to prove their patentability.