Director's Forum: A Blog from USPTO's Leadership
Thursday Dec 28, 2017

PTAB Issues Guidance for Motions to Amend After Aqua Products

Guest Blog by Chief Administrative Patent Judge of the Patent Trial and Appeal Board David Ruschke 

The Patent Trial and Appeal Board (Board) has been conducting America Invents Act (AIA) trials for about five years. The trials were designed by Congress to be a faster and less expensive alternative to district court litigation for challenging the validity of a patent. The ability to amend the patent is one aspect of the trials that is particularly unique to the Board as compared to district court litigation. If the Board institutes a trial, the patent owner may file a motion to amend the challenged claims. In the motion, the patent owner may propose substitute claims in place of the originally-patented claims to overcome any unpatentability arguments raised by the petitioner.

In October, the Federal Circuit, sitting en banc, issued a decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), concerning motion to amend practice before the Board. The Federal Circuit addressed the burden of proof that applies to proving patentability of the substitute claims. The en banc court concluded that the USPTO had not appropriately placed the burden on the patent owner through rulemaking.

The Board recently issued guidance in view of Aqua Products. The intent of the guidance is to provide certainty and transparency on how the Board will handle motions to amend going forward. Consistent with the Court’s decision, 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. Rather, if a patent owner files a motion to amend, the Board will determine whether the substitute claims are unpatentable based on the entirety of the record, including any opposition made by the petitioner.

We believe this guidance will continue to promote patent quality, allowing the USPTO to fulfill its statutory mandate to issue amended claims that are “determined to be patentable.” Any new amended claims will be narrower than the original claims that were previously examined, and will have overcome the prior art that had cast doubt on the sufficiency of that initial examination, as well as any other prior art of record. Although the Board will rely on submissions made by the parties, rather than a new examination of the amended claims, this approach is consistent with the AIA’s post issuance review paradigm, rather than the patent prosecution examinational model.

The Board also recognizes that the pre-Aqua Products approach of placing the burden of persuasion on patent owners with respect to amended claims may have been perceived as requiring patent owners to prove the negative, i.e., that no prior art read on their claims. Understandably, some may have been frustrated by the perception that amended claims might be rejected because of a failure to analyze and address prior art that was not of record. Under the new guidance, if a motion to amend meets obligations of the statute and rules, such as a showing of written support and a narrowing of claims, the Board will analyze amended claims under the same framework applied to original claims, that is, whether they are patentable over the prior art of record.

For the present time, the technical aspects of motion to amend practice before the Board will not change. The Board will continue its current briefing practice as to the types, timing, and certain procedural requirements. In addition, a patent owner must continue to confer with the Board before filing a motion to amend.

If a party in a particular case believes there is a need to discuss the impact of Aqua Products with the Board, they may contact us to arrange a conference call. During the call, they may request briefing changes or an additional briefing, and the Board generally will permit a supplemental briefing if requested. For more details, please read the Guidance on Motions to Amend in view of Aqua Products.

The Board continues to evaluate its processes to keep the AIA trial proceedings fair and balanced for all parties. To that end, we welcome comments and feedback on the Aqua Products guidance. Please share your views by emailing


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