Notice of Proposed Rulemaking on allocation of burdens for motion to amend

Comments due by December 23, 2019

The United States Patent and Trademark Office (USPTO) today provided a Notice of Proposed Rulemaking (NPRM) concerning our rules of practice to allocate the burdens of persuasion on motions to amend in AIA trial proceedings before the Patent Trial and Appeal Board (PTAB). This NPRM is available in the reading room of the Federal Register today. The USPTO invites the public to provide comments on the proposed rule on or before December 23.

The NPRM proposes that a petitioner bears the burden to show the unpatentability of substitute claims proposed in a motion to amend; a patent owner bears the burden to show that a motion to amend complies with certain statutory and regulatory requirements; and the Board may, in the interests of justice, make a determination regarding the patentability of substitute claims based on the record in the proceeding regardless of the burdens assigned to any party.