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The United States Patent and Trademark Office (USPTO) today published a Final Rule concerning the rules of practice to allocate the burdens of persuasion on motions to amend in AIA trial proceedings before the Patent Trial and Appeal Board (Board), consistent with the Board’s current practice.
In Aqua Products, Inc. v. Matal (872 F.3d 1290 (Fed. Cir. 2017)), the en banc Federal Circuit held, that in the absence of rulemaking, the burden of proving the unpatentability of substitute claims proposed in a motion to amend could not be placed on the patent owner. Since that decision, the petitioner has carried this burden. In view of public comments, which generally supported the approach dictated by Aqua Products, the Office now issues a Final Rule. Among other things, the Final Rule expressly assigns to the patent owner the burden of showing that a motion to amend complies with certain statutory and regulatory requirements for such a motion, and expressly assigns to the petitioner the burden of showing unpatentability of substitute claims proposed in a motion to amend.
Read the full text of the Final Rule in the Federal Register. The effective date is 30 days after the date of publication in the Federal Register. The Final Rule applies to all motions to amend filed in an inter partes review, post grant review, or covered business method review proceeding on or after the effective date.
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