Shouvik Biswas and Fahd Patel were featured in Legal Dive's coverage of their webinar, "Motions to Amend: Strategic Considerations for Decision Makers," where they discussed motions to amend patent claims that are being challenged, and how your willingness to file could signal to potential infringers that you plan to assert your claims going forward.
The America Invents Act in 2012 created a process for amending patent claims if they're being challenged, but it's expensive and time-consuming, and you only have a roughly one in four chance of succeeding, Shouvik and Fahd said. But if you decide to throw your resources behind the effort and succeed, you can effectively create what Shouvik called a "super patent" – a patent that's been so thoroughly vetted that any company challenging it would face a daunting prospect of invalidating it.
"If claims get through, it creates a super patent that has the blessing of the U.S. Patent and Trademark office," Shouvik said. "In many respects, it's harder to invalidate later."
They noted that whether you should try to amend your claims if their validity is under challenge is both a business and a strategic decision. Given the expense and time it takes to get through the amendment process, you have to decide if the claims you come out with on the other side are valuable enough to warrant the undertaking.
"Is your patent going to be enforced for years to come where you can contemplate damages going forward?" Fahd added.
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