PTO, Patent Owners at Odds Over AIA Amendment Rules

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By Tony Dutra

Oct. 31 — The Patent and Trademark Office is fighting charges that it has exceeded its authority with tough patent-amendment rules in America Invents Act proceedings ( In re Aqua Prods., Inc., Fed. Cir., No. 2015-1177, PTO brief filed, 10/26/16 ).

Aqua Products Inc. is appealing the PTO's refusal to let it amend patent claims. The office countered those arguments with a detailed statutory interpretation, and also rejected practical suggestions offered in six friend-of-the-court briefs for changing the way it handles amendment requests. The brief characterized the alternatives as evidence that the AIA is ambiguous, giving the PTO the authority to set standards.

Stakeholders questioned the office's tough stance.

“With the brief's focus on agency power rather than on what the best policy ought to be, this case is likely to lead to a further hardening of positions,” said Hans Sauer, deputy general counsel for intellectual property for the Biotechnology Innovation Organization. “That’s unfortunate, because one can fairly ask whether the PTO and the stakeholder community are really that far apart.”

The full 12-member U.S. Court of Appeals for the Federal Circuit is scheduled to hear arguments in the case Dec. 9.

Source Material:

Case docket: No. 2015-1177 (Fed. Cir.)

Briefs:- Aqua Products- PTO- AIPLA- BIO- Case Western- Houston IPLA- IPO- PhRMA

Statutory Interpretation Battle

PTO Solicitor Nathan K. Kelley submitted the brief, but another signatory, Joseph D. Matal, had a front-row seat when Congress was writing the AIA.

Matal was a counsel in the Senate Judiciary Committee during the law's drafting and subsequently wrote “ A Guide To The Legislative History of the America Invents Act,” which at least one Federal Circuit opinion has previously referenced. The PTO brief's detailed review of the drafting history supported its argument that 35 U.S.C. §316(a)(9) allows the office to set “standards and procedures” for amendments, including the burden of proof.

Aqua Products, instead, relied on Section 316(e), the only place where Congress spoke to the burden of proof. It states that “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” The PTO contended that subsection only refers to original patent claims. In the case of amended claims, the burden is on the patent owner to show patentability, according to the PTO.

But Then What Should Standards Be?

The amicus briefs made the same arguments, to some extent. But most said even if the PTO is correct that the burden of proof on amended claims rests with the patent owner, it could implement procedures that offer greater opportunity to make the case.

The briefs, said Sauer, tried to present ways to create a more balanced process for considering amended claims during inter partes review, the AIA-created proceeding where patents can be challenged as invalid based on prior art. “I’m sure many in the PTO are listening,” he said. “The PTO knows as well as anyone that the status quo is unworkable.”

Other Opportunities to Amend?

In a footnote, the PTO said Aqua Products had alternatives to AIA procedures, including making a reissue request or maintaining a continuation application that claims priority to the original application.

Q. Todd Dickinson of Polsinelli P.C., Washington, a former PTO director, said the footnote was confusing because, “The remedy the Office says is available to Aqua is fact-specific and certainly not universally available.”

And, given that the PTO has bemoaned its backlog of such requests, “Why would they want to incent tactical, paper filing of more continuation applications?” he asked. “It's very strange.”

To contact the reporter on this story: Tony Dutra in Washington at

To contact the editor responsible for this story: Mike Wilczek at

For More Information

Text of PTO brief available at

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