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PTAB Issues Guidelines for Motions to Amend

Author: Reza Mollaaghababa

12/07/2017

Read the full post at Post-Grant Counsel

PTAB Issues Guidelines for Motions to Amend

An en banc panel of the Court of Appeals for the Federal Circuit (CAFC) in the case of Aqua Products, Inc. v. Matal recently held that in an inter-partes (IPR) proceeding, the burden of persuasion rests with the challenger to persuade the PATB that substitute claims proposed by a patent owner in a motion to amend are unpatentable. This is a significant shift from the Board’s practice that had required the patent owner to demonstrate that proposed substitute claims are patentable over the art cited by the challenger and the art known to the patent owner.