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December 28, 2017


"[A] patent owner must still meet the requirements for amending the claims as found in 37 C.F.R. § 42.121..., including... not enlarging the claim scope or introducing new matter..."

I wonder if this particular CFR reg is still any good. "New matter" is a question of §112(a) compliance. The CAFC just said a few days ago in Bosch Automotive that Aqua Prods puts burden on *the IPR petitioner* to prove that a proposed amendment does not comply with §112.

In other words, it might well be that the patent owner must comply with the prohibition against new matter, but it is the *challenger's* burden to prove non-compliance. The patent owner will be *assumed*, by default, to have complied, unless the challenger can prove non-compliance.

@ Greg

As a European practitioner having to deal with a.123(2) EPC and the Appeal Board jurisprudence, added subject matter is a problem that all of us over here face on a daily basis.

There is a general rule that a party seeking to establish a fact has the burden of proof of that fact. If an amendment is submitted, the patentee seeking the amendment has the burden of proof that the amendment is permissible. In other words, it is the patentee's burden to prove compliance, not the challenger's burden to prove non-compliance. The challenger may have some specific objections and may also have a burden in regard to those objections, but that is subsidiary to the overall compliance burden.

It is unwise, to say the least, to submit an amendment without having thoroughly checked the application as filed and be in a position to point to clear basis for the amendment proposed. And in this situation you are not looking for the broadest and most speculative scope, but useful narrow scope that meets the purpose of covering likely infringement and is supported in the application as filed and not open to novelty or obviousness objection over the prior art. If, as is usual in these situations, there is an expert giving an opinion as to technical facts including inventive merit, it is no bad idea to check the proposed amended claims with that expert.

Be very careful, and get things right first time. No bad advice in these situations.

Dear Paul,

As ever, your words are wise. Just because the CAFC has assigned the challenger the burden of showing that a given amendment is new matter does not mean that the patentees proposing the amendment should not satisfy themselves that they can quote chapter and verse as to where the amendment is supported.

Mr. Co;e.

I note your comment of:

"There is a general rule that a party seeking to establish a fact has the burden of proof of that fact. If an amendment is submitted, the patentee seeking the amendment has the burden of proof that the amendment is permissible."

Appears to need some adjustment. While it is indeed a "best practice" to "satisfy themselves" the point of the case here is that it is NOT on the person advancing a fact to have the burden as you indicate.

The OVERALL compliance is not as you indicate.

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