Tuesday, October 22, 2019

PTAB - Proposed Rules on Burden of Persuasion on Motions to Amend Claims

Today, the USPTO published a Notice of Proposed Rulemaking (NPRM) concerning burdens of persuasion on motions to amend claims in trials (e.g., inter partes review) before the Patent Trial and Appeal Board (PTAB).

It proposes a petitioner challenging a patent bear the burden to show unpatentability of substitute claims proposed in the motion and the patent owner bear the burden to show that a motion complies with rules and the statutory requirements. Further PTAB can determine the patentability of the substitute claims based on the record. Note this proposed rule is favorable to patent owners.

The USPTO invites public comments on the rule by December 23, 2019.

Copyright © 2019 Robert Moll. All rights reserved.

Friday, October 18, 2019

USPTO - Update on Subject Matter Eligibility - October 17, 2019

Yesterday, the USPTO published an October 2019 update to the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) published on January 7, 2019.

The update is based on public comments on the (2019 PEG), and may be helpful for patent applicants. The USPTO explains and gives examples to respond to five major themes in the comments:

"(I) evaluating whether a claim recites a judicial exception;
(II) the groupings of abstract ideas enumerated in the 2019 PEG;
(III) evaluating whether a judicial exception is integrated into a practical application;
(IV) the prima facie case and the role of evidence with respect to eligibility rejections; and
(V) the application of the 2019 PEG in the patent examining corps."

The USPTO states the update is primarily directed to examination procedures and "all USPTO personnel are expected to follow the guidance."

Copyright © 2019 Robert Moll. All rights reserved.