USPTO Proposes Changes To The Rules For Motions To Amend

The AIA provides that a patent owner may file a motion to amend a patent during the course of an IPR, PGR, or CBM proceeding under 35 U.S.C. §§ 316(d)(1) or 326(d)(1) by cancelling a challenged patent claim or by proposing a reasonable number of substitute claims.  On October 21, 2019, the USPTO announced a notice of proposed rulemaking, which provides modifications to the rules for motions to amend. Specifically, the PTAB adds the requirements summarized below to Rule 42.121:

(1) "patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies with the requirements of paragraphs (1) and (3) of 35 U.S.C. 316(d), as well as paragraphs (a)(2), (3), (b)(1), and (2) of this section:"