Executive Summary1 min read
Key Takeaways
- In an IPR (inter partes review), a challenger attacks an issued patent’s validity, and patent owners sometimes try to narrow claims to save them.
- Previously, the patent owner bore the burden of proving that narrowed claims were still patentable, which made successful amendments difficult to win.
- The Federal Circuit has now shifted that burden onto the petitioner challenging the patent, making it easier for patent owners to amend claims during an IPR.
The Bottom Line: The Federal Circuit’s decision to shift the burden of proof onto IPR petitioners gives patent owners a better chance of saving narrowed claims during an inter partes review.
Summary: Patent Owners Can Breathe (A Little) Easier.
In IPR (inter partes review), a patent is being attacked is invalid. One move a patent owner can make is to narrow some claims so they are not found invalid. Until now, the PTO made this very difficult by requiring the patent owner to prove the narrower claims are patentable. Now, the Federal Circuit stepped in and shifts that heavy burden off of the patent owner and on to the petitioner who is challenging the patent. This is good news!
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