Attorneys Outline PTAB Changes from Past Year

February 4, 2019
Intellectual Property Magazine

In the second article of a two-part series published in Intellectual Property Magazine, Bass, Berry & Sims attorneys Mike Kiklis, Shu Chen and Matthew Zapadka continued their discussion of the recent changes seen at the USPTO’s Patent Trial and Appeal Board (PTAB).

One of the key changes includes a proposed motion-to-amend procedure in inter partes reviews (IPRs), covered business method patent proceedings (CBMs) and post-grant reviews (PGRs). The goal of this procedure is to provide parties with a preliminary assessment of a proposed amendment at the beginning of the process and offer meaningful opportunities to revise the amendment based on the preliminary assessment, while guaranteeing that the trial ends within the 12-month statutory time limit.

Additionally, the authors discuss strategies for determining the best time to file a petition because petitioners may only get one shot. Follow-on petitions face an uphill battle in view of 35 U.S.C. §314(a) and the PTAB’s case law applying that section of the statute.

“PTAB practice has been challenging, to say the least, for patent owners. But we have now entered a new era in PTAB litigation. The updates to the trial practice guide, the new standard operating procedures, the new claim construction standard, and the potential for a better amendment process provide many opportunities for patent owners, as well as something that was very much needed: a more level playing field.”

The two-part article series is available to subscribers on the Intellectual Property Magazine website. The content for each article can be found here: