Askeladden Advocates for Examination of All Proposed Amendments in PTAB Patent Review Proceedings

Raised patent quality concerns stemming from proposed revisions to motion to amend practice in USPTO comment letter.


Date: January 4, 2019



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New York, NY — Askeladden submitted a comment letter to the U.S. Patent and Trademark Office (USPTO) late last month in response to the USPTO’s request for comments on proposed changes to the motion to amend practice and procedures in patent review proceedings under the America Invents Act (AIA) before the Patent Trial and Appeal Board (PTAB). 


In its letter, Askeladden argued that petitioners cannot be consistently relied upon to perform the role of patent examiner for proposed substitute claims in motions to amend. Accordingly, Askeladden strongly advocated for patent examiner review of all proposed substitute claims under the current motion to amend process or under any revised process in order to ensure the new claims are of high quality. 


With respect to the proposed revisions to amendment process, Askeladden supported the implementation of preliminary decisions on motions to amend due to the clarity and efficiency they would provide. However, Askeladden also expressed serious concern that the opportunity for patent owners to submit revised motions to amend, combined with compressed timelines in the proposal, would increase the risk of new low quality patent claims emerging from the proceedings.


“PTAB review proceedings under the AIA are supposed to be an efficient alternative to district court for addressing low quality patents,” said Sean Reilly, General Counsel of Askeladden L.L.C. “Examiner involvement with motions to amend is necessary to ensure that the proceedings do not result in new low quality patent claims.”


Askeladden submitted the comment letter as part of its Patent Quality Initiative, which seeks to improve patent quality and promote innovation by challenging poor quality patents, addressing questionable patent practices, and regularly filing amicus briefs in cases concerning important issues of patent law.




About the Patent Quality Initiative

Askeladden is an education, information and advocacy organization with the goal of improving the understanding, use and reliability of patents in financial services and other industries. As part of its Patent Quality Initiative, Askeladden strives to promote better patents and patent holder behaviors by regularly filing amicus briefs, Inter Partes Reviews (IPRs) and engaging in educational activities.