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Expert Analysis

Promising Signs For Patent Owners Amending At PTAB

Law360 (March 21, 2019, 5:53 PM EDT) -- In October of 2017, the U.S. Court of Appeals for the Federal Circuit issued an en banc decision in Aqua Products Inc. v. Matal, holding that patent owners no longer bear the burden of proving patentability of their amended claims. Instead, the burden appears to be on the petitioner or, in some cases, is shared by the Patent Trial and Appeal Board.[1]

Before the Aqua Products decision, the PTAB placed the burden of demonstrating patentability of amended claims in America Invents Act trials on the patent owner, which severely limited the effectiveness of motion-to-amend practice. Many stakeholders and practitioners anticipated a...

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