USPTO Defends IPR Claim Amendment Standard To Fed Circ.

By Daniel Wilson

Law360, Washington (May 2, 2016, 6:25 PM ET) -- The U.S. Patent and Trademark Office called on the Federal Circuit Monday to uphold the agency's requirements for allowing patent claims to be amended during inter partes reviews, arguing that the criticized policy is a reasonable standard for patentees to meet.

The Patent Trial and Appeal Board fairly requires that patentees adequately prove that their proposed substitute patent claims are patentable, USPTO attorney Jeremiah Helm told a three-judge panel at oral arguments, pushing back against Oil States Energy Services LLC’s argument that the PTAB had wrongly...