Court Ruling Loosens Board’s Reins in Weighing Patent Amendments

A recent Federal Circuit ruling gives the Patent Trial and Appeal Board more freedom to identify its own unpatentability grounds that could block requests to amend a patent.

Patent office precedent said the PTAB may on its own raise a ground of invalidity for a proposed substitute claim but only in certain circumstances, such as when the evidence is “readily identifiable and persuasive.” The Precedential Opinion Panel (POP) had a narrow view of when evidence is readily identifiable.

The precedent is too restrictive, the U.S. Court of Appeals for the Federal Circuit indicated in a March 24 ruling, while ...