Amendments

SORT CASES BY:

Idle Free Systems, Inc. v. Bergstrom, Inc.

CASE SUMMARY:
REQUIREMENTS TO AMEND CLAIMS

Patent Owner’s Motion to amend the claims was dismissed for failure to confer with the Board prior to filing. The Board also provided guidance on the requirements to amend claims. Only a reasonable number of substitute claims is permitted for each challenged claim, which number is presumed to be one. An amendment must be responsive to a ground of unpatentability at issue, and it may not enlarge the scope of the claim or introduce new matter. These criteria are evaluated on a claim-by-claim basis, and therefore the Patent Owner must specify which challenged claim a proposed claim is intended to replace. For each proposed claim, the Patent Owner has the burden to show (i) the proposed claim is patentably distinct over the prior art, by identifying specific features in the proposed claim that make it patentable, and (ii) there is written description support for the proposed claim.

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