On December 21, 2020, the USPTO published its final rule allocating the burdens of persuasion for motions to amend and the patentability of proposed substitute claims in IPR, PGR, and CBM proceedings.  This rule package follows up on the USPTO's notice of proposed rulemaking released in October 2019.  This rule largely codifies the existing practice and the Federal Circuit's precedent in Aqua Products and other decisions regarding motions to amend in AIA trials.

Specifically, the final rule "assigns the burden of persuasion to the patent owner to show . that a motion to amend complies with certain statutory and regulatory requirements for a motion to amend."  85 Fed. Reg. 82923, 82924 (Dec. 21, 2020).  For example, a Patent Owner bears the burden to show that proposed substitute claims comply with statutory requirements and regulatory requirements, such as responding to a ground of unpatentability involved in the trial and not seeking to enlarge the scope of the claims.  On the other hand, the final rule, however, "assigns the burden of persuasion to the petitioner to show . that any proposed substitute claims are unpatentable."  Id

As to independent action by the Board, the final rule also provides that "the Board may, in the interests of justice, exercise its discretion to grant or deny a motion to amend, but only for reasons supported by readily identifiable and persuasive evidence of record in the proceeding."  Id.  In exercising its discretion, the Board may make of record readily identifiable and persuasive evidence in a related proceeding before the Office or evidence that a district court can judicially notice.  The Office stated that it anticipates that the Board will exercise its discretion in "only in rare circumstances."  Id.

These final rules will be effective on January 20, 2021.  Thus, these new rules will apply to all motions to amend filed on or after January 20, 2021.

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