IPR tweak proposed

Staff working for Sen. Chuck Grassley (R-Iowa), chairman of the U.S. Senate Judiciary Committee, have drafted a legislative proposal intended to address one of the drug industry's complaints about the inter partes review system. Biopharmaceutical companies contend that the U.S. Patent and Trademark Office has implemented the America Invents Act in ways that make it almost impossible to save a patent by amending a claim that has been challenged in an IPR petition.

The proposal would make it easier for patent holders to amend claims in order to cancel a challenged claim, or if the patent holder and the challenger agree that the amendment would "materially advance" efforts to settle an IPR dispute. Patent holders would only be able to amend claims that are being challenged in an IPR, and modifications that expand the scope of a patent's claims would not be permitted. The Patent Office would consider amendment requests "with special dispatch." ...