Washington, D.C. intellectual property lawyer Matt Phillips shares his thoughts about motions to amend in AIA trials. He explains that motions to amend generally make little sense in most AIA trials, primarily because of intervening rights—the loss of the ability to recover damages for past infringement once claim amendments are made. Another key reason such motions are often disfavored is the availability of alternative avenues. When a pending continuation exists within the patent family, it is usually more effective to obtain the desired claim adjustments there, fine-tuning the language as needed. Similarly, filing a reissue application during or after an AIA trial can accomplish the same objective more efficiently.

He notes one important exception: when there is co-pending litigation, it can be strategically advantageous to file a motion to amend that expressly incorporates the party’s claim construction positions into the claim language. This approach can help align the patent record with litigation strategy.

Finally, he emphasizes that if a motion to amend is filed in an AIA trial, counsel should always take advantage of the Patent Office’s pilot programs designed to facilitate such motions. These programs are intended to shift the balance slightly in favor of patent owners, and he observes that it would be highly unusual not to use them under current practice.