AIPLA Comments to USPTO on Rules of Practice To Allocate the Burden of Persuasion on Motions To Amend in Trial Proceedings Before the Patent Trial and Appeal Board

AIPLA appreciates the Office’s efforts to improve AIA trial proceedings, which have become pervasive since their initial implementation in September 2012.

On several prior occasions, AIPLA has expressed its concerns with the existing motions to amend practice and procedure, and especially appreciates the Office’s attempt to improve this practice and make motions to amend, as contemplated by the statute, a viable option as part of a trial proceeding.

 AIPLA generally supports the proposed rulemaking that is subject of this comment.

Consistent with the December 20, 2018 comments, AIPLA is pleased that the Office has followed notice and comment rulemaking to allocate the burden of persuasion regarding the patentability of proposed substitute claims in a motion to amend.

We address some issues with the proposed rules in the comments that follow.