PTAB Proposes Burden of Persuasion Rules for AIA Amendments, PTAB Litigation Blog
On October 21, 2019, the Patent Trial and Appeal Board ("PTAB") of the United States Patent and Trademark Office ("USPTO") provided a Notice of Proposed Rulemaking ("NPRM") concerning their rules of practice in allocating burdens of persuasion on motions to amend in America Invents Act ("AIA") trial proceedings before the PTAB. These new proposed rules will allocate to patent owners the burden of demonstrating that a motion to amend complies with necessary statutory and regulatory requirements, and to petitioner, the burden to show the unpatentability of substitute claims proposed in a motion to amend. In addition, the proposed rules grant the PTAB discretion to, in the interests of justice, grant or deny a motion to amend based on the record in the proceeding and regardless of the burdens assigned to any party.
Jones Day publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only and may not be quoted or referred to in any other publication or proceeding without the prior written consent of the Firm, to be given or withheld at our discretion. To request reprint permission for any of our publications, please use our “Contact Us” form, which can be found on our website at www.jonesday.com. The mailing of this publication is not intended to create, and receipt of it does not constitute, an attorney-client relationship. The views set forth herein are the personal views of the authors and do not necessarily reflect those of the Firm.