The full US Court of Appeals for the Federal Circuit has issued an order granting en banc review of the Patent Trial and Appeal Board’s (PTAB) rules governing amendments filed in the course of America Invents Act reviews. In re: Aqua Products, Case No. 15-1177 (Fed Cir., Aug. 12, 2016).

Under the statute, 35 USC § 316(d), a patent owner is given one opportunity to propose amendments or substitute claims. The PTAB rules, however, require the patent owner to demonstrate that the proposed amendments would make the claims patentable over the known prior art.

In the underlying case, Aqua Products moved to amend some of its claims to include the limitations found in non-instituted claims. Although the PTAB agreed that the new claims satisfied the formal requirements of § 316(d), it refused to enter the amendment, finding that the motion failed to establish that the substitute claims were patentable over the prior art.

In its original decision, the Federal Circuit upheld the PTAB rule (IP Update, Vol. 19, No. 6). In vacating the original panel decision, the en banc Federal Circuit asked the parties—Aqua Products and the US Patent and Trademark Office (PTO)—to brief the following questions:

• When the patent owner moves to amend its claims under 35 USC § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 USC § 316(e)?

• When the petitioner does not challenge the patentability of a proposed amended claim, or the PTAB thinks the challenge is inadequate, may the PTAB sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie?