Amending Patent Claims

68 Pages Posted: 7 Oct 2018  

Greg Reilly

IIT Chicago-Kent College of Law

Date Written: September 14, 2018

Abstract

Patent claims traditionally have been freely amendable to overcome a finding of unpatentability. For that reason, the Patent Office’s restrictive approach to amendments in new post-issuance review proceedings created by the America Invents Act provoked strident criticism; generated administrative, statutory, and constitutional challenges; and fractured the Federal Circuit. This Article supplies the comprehensive evaluation of the costs and benefits of patent claim amendments, both in examination and post-issuance, surprisingly missing in the literature.

The results are mixed. Amendments in initial examination are less clearly warranted than commonly thought, with the costs – primarily problematic drafting incentives – often overlooked and the benefits often overstated given other tools to protect patentees’ legitimate claim scope. Conversely, post-issuance amendments are more justified than often thought, with competitors’ reliance interests overstated, patentees’ reliance interests understated, and strategic behavior possible on both sides. Resolving the ambiguity in the optimality of claim amendments depends on a normative view of where to place the risk of error – hindering protection and incentives for inventors when warranted amendments are denied or hindering competition and follow-on innovation when unwarranted amendments are allowed.

This provides important policy insights. First, because claim amendments invoke the patent system’s basic trade-off between innovation and competition, they offer a promising, but underutilized, tool for Congress to adjust this balance. Second, given the ambiguity in the justifications for claim amendments, the long-standing liberality towards amendments, and the Patent Office’s historically-limited role, the Patent Office probably should not adopt an overly restrictive approach to post-issuance amendments without clearer direction from Congress, despite having the power to do so. Third, the best policy for post-issuance amendments may be a discretionary, case-by-case approach rather than a “one-size-fits-all” approach that is likely to generate significant errors.

Keywords: Patent, Patent Claims, Patent Office, PTO, Patent Examination, Claim Amendments, PTAB, Inter Partes Review, Post-Issuance Review, Continuation, Optimal Claim Scope, Aqua Products, Patent Quality, Tailored Patent Law

Suggested Citation

Reilly, Greg, Amending Patent Claims (September 14, 2018). Harvard Journal of Law & Technology, Vol. 32, Forthcoming . Available at SSRN: https://ssrn.com/abstract=3249589

Greg Reilly (Contact Author)

IIT Chicago-Kent College of Law ( email )

565 W. Adams St.
Chicago, IL 60661-3691
United States

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