Christopher North, Shareholder in Buchanan's Intellectual Property section, authored "Challenges in Amending Claims in an IPR: The Evolving Burden on a Patent Owner" for the firm's PTAB Report on December 27, 2016.
Amending claims during an inter partes review (IPR) proceeding is not like amending claims during ex parte prosecution or a reexamination procedure. Generally, the patent owner has only one chance to propose substitute claims for challenged claims on a one-to-one basis, and must meet several requirements in doing so. See 35 U.S.C. § 316(a)(9); 37 C.F.R. § 42.121.