Legal Definitions - amendment after appeal

In the context of patent law, an amendment after appeal refers to a modification made to a patent applicationafter the applicant has initiated an appeal to the Patent Trial and Appeal Board (PTAB) regarding an examiner's rejection of their patent claims.

When a patent examiner repeatedly rejects claims in a patent application, the applicant has the option to appeal that decision to the PTAB. An amendment after appeal is a strategic step taken by the applicant to revise their patent claims or specification in response to the PTAB's decision, guidance, or to facilitate further examination, with the goal of ultimately securing patent protection.

Here are some examples illustrating this concept:

• Example 1: Responding to a PTAB Decision

  A small engineering firm, Robotics Innovations, applied for a patent on a novel robotic arm design. The patent examiner rejected several claims, arguing they were too broad. Robotics Innovations appealed this decision to the PTAB. After reviewing the arguments, the PTAB upheld some of the examiner's rejections but also suggested that if the claims were narrowed to include a specific type of sensor integration, they might be allowable. In response, Robotics Innovations filed an amendment after appeal, modifying their claims to incorporate the suggested sensor integration, hoping to overcome the rejections and move closer to patent grant.

• Example 2: After a PTAB Remand

  Dr. Anya Sharma developed a unique method for purifying water and filed a patent application. The patent examiner rejected her claims, citing obviousness in light of existing technologies. Dr. Sharma appealed to the PTAB. The PTAB, while agreeing with some of Dr. Sharma's arguments, decided to "remand" the application back to the examiner for further consideration of a specific prior art reference, indicating that the claims might be allowable if certain unique steps were more clearly defined. Following this remand, Dr. Sharma submitted an amendment after appeal to precisely articulate the inventive steps of her purification method, addressing the PTAB's guidance and the examiner's previous concerns.

• Example 3: To Facilitate Reopening Examination

  A software startup, CodeFlow Solutions, sought a patent for a new data compression algorithm. After the examiner rejected their claims, CodeFlow Solutions appealed to the PTAB. During the appeal process, but before the PTAB issued a final decision, CodeFlow's patent attorney identified a minor but critical wording change in one of the claims that could directly address a key objection raised by the examiner. To expedite the process and potentially avoid a full PTAB decision, CodeFlow Solutions filed an amendment after appeal. This amendment aimed to convince the PTAB to send the application back to the examiner for further review, or even to allow the claims, based on the newly clarified language.