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Federal Circuit Appears Likely to Overturn Patent Office Denials of Amendment During IPR

Jim Ruttler, Patent Attorney

Posted Tuesday, August 30, 2016 by Jim Ruttler

Back in May 2016, the Federal Circuit decided in Aqua Products that a patent owner had the burden to argue patentability for any amended claims during inter partes review proceedings. In these proceedings, also known as IPRs, patent owners often file motions to amend the claims to overcome newly discovered art. The Patent Office, however, has made it very difficult to amend claims, denying 95% of all motions to amend. The statute, however, specifies that patent owners shall have the right to file a motion to amend one time. The Patent Office’s response to this is that the statute only permits a right to file a motion and that they can deny that motion. Worse yet, the Patent Office says often that the reason the motion is being denied is because the patent owner has not proved that the amended claims are patentable.

The Patent Office has gotten away with this charade for a year now, but the jig is about to be up - at least in my opinion. The patent owner should be entitled by statute to amend the claims and the Patent Office should bear the burden to determine whether the claims are unpatentable - not the patent owner.

The Federal Circuit decided this week to reconsider the Aqua Products decision en banc. This means that a majority of the judges believe this case should be reconsidered and it is rare and significant.

Expect a decision by end of 2016 on this.

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