Motion to Amend Burden Final Rule Published, PTAB Litigation Blog
The Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a final rule regarding the allocation of the burden of persuasion for the patentability of substitute claims on motions to amend in trial proceedings before the PTAB, revising the rules of practice for inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM). 85 FR 82923 (Dec. 21, 2020). The rule became effective as of January 21, 2021 and codifies the current practice following the precedent set forth by the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc).
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.