The AIA provides that a patent owner may file a motion to amend a patent during the course of an IPR, PGR, or CBM proceeding under 35 U.S.C. §§ 316(d)(1) or 326(d)(1) by cancelling a challenged patent claim or by proposing a reasonable number of substitute claims. On October 21, 2019, the USPTO announced a notice of proposed rulemaking, which provides modifications to the rules for motions to amend. Specifically, the PTAB adds the requirements summarized below to Rule 42.121:

(1) “patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies with the requirements of paragraphs (1) and (3) of 35 U.S.C. 316(d), as well as paragraphs (a)(2), (3), (b)(1), and (2) of this section:”

(2) “petitioner bears the burden of persuasion to show, by a preponderance of the evidence, that any proposed substitute claims are unpatentable

(3) “the Board may, in the interests of justice, exercise its discretion to grant or deny a motion to amend for any reason supported by the evidence of record”

Notice of Proposed Rulemaking for 37 CFR Part 42 (“Notice”), 23. Thus, the proposed additions to Rule 42.121 affirmatively place upon Patent Owner the “burden of persuasion” to establish both the requirements of the statute regarding motions to amend and the existing requirements of Rule 42.121. These statutory and regulatory requirements include the following:

  • propose a reasonable number of substitute claims
  • not enlarge the scope of the claims of the patent or introduce new matter
  • respond to a ground of unpatentability involved in the trial
  • show support in the original disclosure of the patent for each claim that is added or amended
  • show support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.

The USPTO’s notice of proposed rulemaking is the outcome of the USPTO’s October 28, 2019 request for public comment on the Board’s amendment procedure and practice. The notice addresses many of the comments received.

The notice emphasizes the Board’s discretion to reach determinations even when one or more parties have not satisfied the appropriate burden. While highlighting that the USPTO anticipates the Board will only exercise this discretion “in rare circumstances,” the proposed rules contain several examples of how the Board might choose to exercise its discretion. Rules, 15. Specifically, when a party has not met its burden in relation to a motion to amend or any substitute claims proposed in that motion, the Board may still elect to reach a patentability determination based on the evidence of record. Notice, 14–15.

The Board may also exercise its discretion to determine that a motion to amend complies with any or all of the statutory and regulatory requirements, “even if a patent owner does not expressly address or establish every requirement in its briefing,” provided the Board can easily identify persuasive evidence of record and the petitioner has had the opportunity to respond to that evidence. Notice, 15. Further, the Board’s discretion allows it to determine patentability when the “petitioner does not oppose the amendment or does not meet its burden of persuasion in relation to any proposed substitute claim.” Id. And the discretion of the Board also extends to denying a motion to amend when the petitioner has failed to meet its burden of persuasion, so long as the record contains “easily identified and persuasive evidence of unpatentability” and the patent owner has had the opportunity to respond to that evidence. Notice, 16.

The USPTO has solicited comments from the public on the proposed rule changes. Written comments must be received by 60 days from the date of publication or December 21, 2019.