Harness IP patent attorney Matt Cutler spoke with Law360 about new guidance from Chief Judge David Ruschke concerning motions to amend patent claims in AIA reviews.

The guidance, issued November 21, is in response to the en banc decision from the Federal Circuit on In re: Aqua Products in which the Board discarded a rule from the USPTO stating that patent owners, when seeking to amend patent claims during AIA reviews, had the burden of proving new claims are patentable.

This new guidance is thought to give patent owners more clarity and consistency in filing Motions to Amend among different judges at the PTAB. Substitute claims will now be deemed patentable or unpatentable based on a “preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner,” wrote Judge Ruschke.

Outside of this change, however, most guidelines for filing a Motion to Amend will remain the same. There is general agreement that patent owners will still need to follow all of the requirements of a Motion to Amend. In a recent blog post titled “PTAB Provides Guidance on Motions to Amend,” Cutler provides a checklist of items that patent owners will still have to follow.

As it is simply guidance at this point and not yet a rule, there is speculation about whether it will gain any permanence at the USPTO. “It could be a short-term bridge to the rule, or if the PTAB decides not to go down the path of creating the rule, it will be the long-term way that motions to amend are handled,” said Cutler.

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