PTO issues “Guidance on Motions to Amend in view of Aqua Products”

PTO Guidance on Motions to Amend in view of Aqua Products

Update following Oct. 4, 2017 FC (en banc) opinion (Aqua Products, Inc. v. Joseph Matal (USPTO), Docket No. 2015-1177 (IPR2013-00159): USPTO issued guidance on Nov. 21, 2017, explaining that “the Board will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims presented in a motion to amend.” Provided the “motion to amend…meets the requirements of 35 U.S.C. § 316(d)” (as well as § 42.121 and § 42.221), “the Board will proceed to determine whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner” (“[I]f the entirety of the evidence of record before the Board is in equipoise as to the unpatentability of one or more substitute claims, the Board will grant the motion to amend.”) “[C]urrent briefing practice” will not change, but “if any party…believes there is need to discuss the impact of Aqua Products with the Board in a particular case”, a conference call may be arranged (before or after Due Date 1, and the Board may contact parties with pending motions to amend “to let them know that a request for a conference call is appropriate in this regard”).

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