No Duty to Discuss Closest Prior Art…But you Probably Should Anyway

In implementing the Federal Circuit’s In Re Aqua Products’ holding, the Patent Trial & Appeal Board (PTAB) explains that “practice and procedure before the Board will not change.” And that, “[t]he Board will continue its current briefing practice as to the types, timing, and page limits of briefs.”

As pointed out previously, removing the burden from the Patent Owner Motion to Amend will aid the PTAB in granting far more motions, but ultimately, amendments are not expected to be any more attractive, or common.
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Aqua Products: A Gift to the PTAB

Yesterday I explained why In re Aqua Products would not result in PTAB Motions to Amend being any more attractive or ultimately successful. This is because Motions to Amend are rarely advisable in litigation scenarios given intervening rights. And even where viable, such infringement-inspired amendments are almost always too incremental in nature to distinguish over the art. That said, Aqua Products is an absolute game changer for the agency itself.

With the burden of patentability now offloaded from the Motion to Amend, such motions can now be entered (i.e., granted) before reaching the ultimate question of whether or not the amended claim is actually patentable. As upward of 60% of pre-Aqua motions failed on patentability grounds, one can expect that the grant rate of such motions to now exceed 60%.

For this reason, Aqua Products is manna from heaven for the agency.
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Federal Circuit Flips Burden in PTAB Motion to Amend

For PTAB practitioners, the en banc decision in In re Aqua Products is a complete non-event. While the decision has been embraced as a net positive for Patentees, practically speaking, it will not move the needle on amending at the PTAB.

Aqua Products held that it is improper for the PTAB to place the burden of persuasion on the Patentee relative to the patentability of new/amended claims. Going forward, this burden of persuasion will rest with Petitioners (as it does for originally challenged claims 35 USC § 316(e)). (here)

While this shift may be seen as a positive for Patentees, the difficulties/unpopularity in amending at the PTAB never had anything to do with an improper shifting of the burden of patentability.


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