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ARTICLE · 18 DECEMBER 2019

PTAB Webinar Addresses Motion To Amend Practice

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On December 4, 2019, the PTAB hosted the last installment for 2019 in its "Boardside Chat" webinar series. The program, presented by Deputy Chief Judge Jacqueline Bonilla and Lead ...

United StatesIntellectual Property
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Matthew Johnson
Susan Gerber
Susan Gerber
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On December 4, 2019, the PTAB hosted the last installment for 2019 in its "Boardside Chat" webinar series. The program, presented by Deputy Chief Judge Jacqueline Bonilla and Lead Administrative Patent Judge Jessica Kaiser, addressed Motion to Amend practice in IPR proceedings, particularly the recent developments in this area. The program focused on three main topics: the proposed rulemaking on allocations of burden when moving to amend, the motion to amend pilot program, and other amendment options through reissue and reexamination.

First, the panel noted that the proposed rulemaking on the allocation of burden was published October 22, 2019, and the period for public comment closes on December 23, 2019. Under the proposed rule, the Patent Owner carries the burden of showing that a motion to amend complies with certain statutory and regulatory requirements, and the Petitioner carries the burden of showing that the substitute claims proposed by the Patent Owner would

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