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Patent Owner Tip #13 for Surviving an Instituted IPR: When to Amend Claims in an IPR

After an inter partes review (“IPR”) is instituted, a patent owner has an opportunity to file a motion to amend the claims and thereby propose a reasonable number of substitute claims. See 35 U.S.C. § 316(d)(1). Unlike the...more

Overcoming Obviousness Rejections: Arguing Changes to Fundamental Principle of Operation

When trying to overcome an obviousness rejection of a patent claim, an argument that two or more cited references cannot be combined may be used. For example, it can be argued that the combination is improper because the...more

USPTO Launches PTAB Procedural Reform Initiative

On April 7, 2017, the U.S. Patent and Trademark Office (USPTO) announced it has launched an initiative to develop ways to improve Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review proceedings....more

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