Final Rule to Assign Burden of Persuasion on Motions to Amend in Trial Proceedings

Intellectual Property Law

The U.S. Patent and Trademark Office (Patent Office) has issued final rules in inter partes review (IPR), post-grant review (PGR) and the transitional program for covered business method patents (CBM) proceedings (collectively, post-grant trial proceedings) before the Patent Trial and Appeal Board (Board) to allocate the burdens of persuasion for motions to amend and the patentability of substitute claims.1

The final rule revises the regulations for IPR, PGR and CBM procedures that incorporate the Leahy-Smith America Invents Act (AIA) providing for post-grant trials before the Patent Office.2 Under the AIA, a patent owner may file a motion to amend the patent in an IPR, PGR or CBM proceeding by canceling a claim being challenged or by proposing a reasonable number of substitute claims.3

Previously, the Patent Office placed the burden of showing the patentability of proposed substitute claims on the patent owner moving to amend a patent in a post-grant trial proceeding. The Patent Office has revised the rules to specifically assign to the petitioner the burden of showing the unpatentability of patent owner substitute claims in a motion to amend.

In addition, the Patent Office has revised the rules to assign to the patent owner the burden of showing that a motion to amend conforms to the statutory and regulatory conditions for the motion. In particular, the final rule places the burden of persuasion on the patent owner to show, by a preponderance of the evidence, that the motion to amend satisfies the statutory and regulatory requirements for a motion to amend (i.e., 35 U.S.C. 316(d) or 326(d); 37 CFR 42.121(a)(2), (a)(3), (b)(1) or (b)(2), or 42.221(a)(2), (a)(3), (b)(1) or (b)(2)).

However, the rules were also revised to enable the Board, in the interests of justice, to exercise its discretion to grant or deny a motion to amend only for reasons exhibited by readily discernible and persuasive evidence of record. The Board may make of record only readily identifiable evidence in a related proceeding or evidence that a district court can judicially notice. When the Board exercises its discretion, the parties will have an opportunity to respond.

Situations where the Board exercises its discretion in the interests of justice may include those in which the petitioner stops participating or decides not to oppose the motion to amend, or where specific evidence is so recognizable and persuasive. Likewise, the Board may exercise its discretion where the patent owner does not establish every statutory and regulatory requirement for a motion to amend, but evidence of observance of those requirements is so identifiable and persuasive.

Rule Change Impact

The rules represent another initiative by the Patent Office to provide the patent owner with a better chance at getting motions to amend entered during a proceeding. The rules provide more flexibility for patent owners to ensure that motions to amend are properly considered and not rejected on procedural grounds. At the same time, the rules provide the Board with discretion in limited circumstances to deny a motion to amend in the interests of justice. Thus, petitioners are on notice that the Board will likely be entering motions to amend at a higher rate than it had previously. These final rules are part of an overall effort by the Patent Office to ensure patent owners get a fair shake.

The rules were published in the Federal Register on December 9, 2020, and are available online at The effective date of the final rules applies to all motions to amend filed in an IPR, PGR or CBM proceeding on or after January 20, 2021.

Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.

1 Rules of Practice to Allocate the Burden of Persuasion on Motions to Amend in Trial Proceedings Before the Patent Trial and Appeal Board, 85 Fed. Reg. 82923 (Dec. 21, 2020).

2 Leahy-Smith America Invents Act, Public Law 112-29, 125 Stat. 284 (2011).

3 35 U.S.C. 316(d)(1), 326(d)(1).



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