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DOC/PTO | RIN: 0651-AD34 | Publication ID: Fall 2019 |
Title: ●Changes to Rules of Practice to Allocate the Burden of Persuasion on Motions to Amend in Trial Proceedings Before the Patent Trial and Appeal Board | |
Abstract:
The United States Patent and Trademark Office (USPTO” or Office”) proposes changes to the rules of practice in inter partes review (IPR”), post-grant review (PGR”), and the transitional program for covered business method patents (CBM”) (collectively post-grant trial”) proceedings before the Patent Trial and Appeal Board (PTAB” or Board”) to allocate the burden of persuasion in relation to the patentability of substitute claims proposed in motions to amend filed pursuant to 35 U.S.C. 316(d) and 326(d). The en banc United States Court of Appeals for the Federal Circuit held in Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc) (Aqua Products”) that the Office had not adopted a rule allocating the burden of persuasion with respect to the patentability of proposed substitute claims that was entitled to deference. In light of Aqua Products, and to better ensure the predictability and certainty of post-grant trial proceedings before the Board, the Office proposes changes to the rules of practice governing motions to amend, to expressly assign the burden of showing the unpatentability of substitute claims proposed in a motion to amend to the petitioner. To address instances where a petitioner does not oppose an amendment or does not meet its burden of persuasion in this regard, however, the Office also proposes rules of practice to expressly provide that the Board itself may justify any finding of unpatentability, based on the entire record of the proceeding.
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Agency: Department of Commerce(DOC) | Priority: Substantive, Nonsignificant |
RIN Status: First time published in the Unified Agenda | Agenda Stage of Rulemaking: Proposed Rule Stage |
Major: No | Unfunded Mandates: No |
EO 13771 Designation: Not subject to, not significant | |
CFR Citation: 37 CFR 42 | |
Legal Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316, and 321-326 Pub. L. 112–29, 125 Stat. 284 Pub. L. 112‒274, 126 Stat. 2456 |
Legal Deadline:
None |
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Timetable:
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Regulatory Flexibility Analysis Required: No | Government Levels Affected: None |
Small Entities Affected: No | Federalism: No |
Included in the Regulatory Plan: No | |
RIN Data Printed in the FR: No | |
Agency Contact: Christopher L. Crumbley Lead Administrative Patent Judge Department of Commerce Patent and Trademark Office P. O. Box 1450, Alexandria, VA 22313-1450 Phone:571 272-9797 Fax:571 273-9797 Email: mtaburden2019@uspto.gov |