Precedent Panel Says PTAB Can Raise Grounds Against Amendments

The Patent Trial and Appeal Board can raise its own reasons for blocking a company’s effort to amend its patent during a validity trial only in very limited circumstances, an agency leadership panel said.

The Patent and Trademark Office’s Precedential Opinion Panel, in a decision Monday, said the board “may, in certain rare circumstances, raise a ground of unpatentability that a petitioner did not advance, or insufficiently developed, against substitute claims proposed in a motion to amend.”

The holding, said Rutan & Tucker LLP patent attorney Ravi Mohan, is grounded in the idea of “improving and increasing quality patents.”

“There’s ...