Intellectual Property > IP Newsflash > PTAB Rules That Amendment Date Does Not Qualify a Patent for Post-Grant Review
27 Jul '16

On July 25, the Patent Trial and Appeal Board (PTAB) ruled that amendments made after a patent issues do not make the patent eligible for post-grant review. The patent at issue, U.S. Patent No. 9,108,890 (the ’890 patent), is generally directed to a method for manufacturing training aids that train explosives detection dogs to detect homemade explosives in various environments. The petitioner, David O. B. A. Adebimpe, filed a petition requesting post-grant review of the ’890 patent. The patent owner, Johns Hopkins University, argued that the ’890 patent is ineligible for post-grant review because it does not meet the statutory filing date requirement. Post-grant review proceedings under the America Invents Acts are available only for patents that issue from applications where at least one claim has an effective filing date on or after March 16, 2013. The ’890 patent was filed on February 25, 2013, and claims priority to a provisional application filed October 4, 2012. The claims of the ’890 patent were amended on March 17, 2015.

The petitioner argued that the effective filing date of the ’890 patent is the date on which the claims were amended, March 17, 2015. The PTAB stated that 35 U.S.C. § 100(i), which defines “effective filing date,” makes no provision for the effective filing date to be later than the actual filing date of the application, even if the application is later amended, and even if that later amendment lacks written description support in the original specification. Therefore, the effective filing date of the ’890 patent cannot be the date the claims were amended. The PTAB held that the effective filing date of the ’890 patent must be either the actual filing date or the date to which the patent claims priority. The PTAB declined to rule on the validity of the claim of priority to the earlier provisional application because both the actual filing date and the earlier priority date claimed are before March 16, 2013, the effective filing date required for post-grant review. As a result, the  PTAB denied the petition. 

Adebimpe v. The Johns Hopkins Univ., PGR2016-00020, (PTAB July 25, 2016).