Burden of Persuasion to Demonstrate Unpatentability on Petitioner
The United States Patent and Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) to allocate the burdens of persuasion on motions to amend in AIA trial proceedings before the Patent Trial and Appeal Board (PTAB). The NPRM proposes that a petitioner bears the burden to show the unpatentability of substitute claims proposed in a motion to amend; a patent owner bears the burden to show that a motion to amend complies with certain statutory and regulatory requirements; and the Board may, in the interests of justice, make a determination regarding the patentability of substitute claims based on the record in the proceeding regardless of the burdens assigned to any party.
The NPRM basically follows the en banc decision in Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), in which a majority of the judges concluded that the Office had not adopted a rule allocating the burden of persuasion with respect to the patentability of proposed substitute claims. In light of Aqua Products, as well as public comment provided in response to a Request for Comments, the Office proposes to issue specific rules applicable to motions to amend.