Post-Grant for Practitioners: Amendments After Aqua Products

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In October 2017, the Federal Circuit released its much-anticipated Aqua Products decision addressing amendment practice before the PTAB. Unfortunately for practitioners, the Federal Circuit's decision didn't resolve many of the big questions surrounding amendments but instead asked the PTO to develop more formal rules for patentees who want to amend claims during IPR. Fish attorneys Karl Renner, Josh Griswold, and Oliver Richards discussed what guidance we can glean from the Federal Circuit's Aqua Products decision and what happens next. The discussion included the following topics:

  • What to expect at the Federal Circuit on appeals involving motions to amend
  • PTAB trends before and after Aqua Products
  • Best practices for motions to amend for both petitioners and patent owners
  • Future PTO rulemaking

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