The Patent Trial and Appeal Board (PTAB) recently released new guidance on amending patent claims in American Invents Act (AIA) reviews. The goal of the new guidance is to help ensure consistency among different panels of judges at the PTAB in light of the Federal Circuit’s recent decision in In re: Aqua Products. The guidance states that the board will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims. Instead, the board will “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.” Finnegan attorney James Barney represented Aqua Products at the Federal Circuit, and Law360 contacted him for his thoughts on the new guidance.
James said, “We’re going to have to wait and see how this works in practice because there is a fine line between saying that you’re not putting the burden [of persuasion] on the patent owner but then requiring the patent owner to do all these things under the banner of burden of production. If the PTAB truly follows what the Federal Circuit said to do — which is put the burden on the petitioner for these amended claims — and if more amendments start succeeding, then I think you will start to see an uptick in filed amendments.”
