37 CFR 42.221: Amendment of the patent

Taken from the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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42.221    Amendment of the patent.

  • (a) Motion to amend. A patent owner may file one motion to amend a patent, but only after conferring with the Board.
    • (1) Due date. Unless a due date is provided in a Board order, a motion to amend must be filed no later than the filing of a patent owner response.
    • (2) Scope. A motion to amend may be denied where:
      • (i) The amendment does not respond to a ground of unpatentability involved in the trial; or
      • (ii) The amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.
    • (3) A reasonable number of substitute claims. A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims. The presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need.
  • (b) Content. A motion to amend claims must include a claim listing, which claim listing may be contained in an appendix to the motion, show the changes clearly, and set forth:
    • (1) The support in the original disclosure of the patent for each claim that is added or amended; and
    • (2) The support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.
  • (c) Additional motion to amend. In addition to the requirements set forth in paragraphs (a) and (b) of this section, any additional motion to amend may not be filed without Board authorization. An additional motion to amend may be authorized when there is a good cause showing or a joint request of the petitioner and the patent owner to materially advance a settlement. In determining whether to authorize such an additional motion to amend, the Board will consider whether a petitioner has submitted supplemental information after the time period set for filing a motion to amend in paragraph (a)(1) of this section.
[Applicability Note: Subpart C (Post-Grant Review) generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA. In addition, the Chief Administrative Patent Judge may, in the interests-of-justice, order an interference commenced before September 16, 2012 to be dismissed without prejudice to the filing of a petition for post-grant review. See § 42.200(d) and the Leahy-Smith America Invents Act, Public Law 112-29, sec. 6(f)(3)(A).]
[Added, 77 FR 48680, Aug. 14, 2012, effective Sept. 16, 2012; para. (b) introductory text revised, 80 FR 28561, May 19, 2015, effective May 19, 2015]