[Federal Register Volume 84, Number 204 (Tuesday, October 22, 2019)]
[Proposed Rules]
[Pages 56401-56406]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-22768]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 42
[Docket No. PTO-P-2019-0011]
RIN 0651-AD34
Rules of Practice To Allocate the Burden of Persuasion on Motions
To Amend in Trial Proceedings Before the Patent Trial and Appeal Board
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The United States Patent and Trademark Office (``USPTO'' or
``Office'') proposes changes to the rules of practice in inter partes
review (``IPR''), post-grant review (``PGR''), and the transitional
program for covered business method patents (``CBM'') (collectively
``post-grant trial'') proceedings before the Patent Trial and Appeal
Board (``PTAB'' or ``Board'') to allocate the burdens of persuasion in
relation to motions to amend and the patentability of substitute claims
proposed therein.
DATES: Comment Deadline Date: The Office solicits comments from the
public on this proposed rulemaking. Written comments must be received
on or before December 23, 2019 to ensure consideration.
ADDRESSES: Comments should be sent by electronic mail message over the
internet addressed to: [email protected]. Comments may also be
sent by electronic mail message over the internet via the Federal
eRulemaking Portal at http://www.regulations.gov. See the Federal
eRulemaking Portal website for additional instructions on providing
comments via the Federal eRulemaking Portal. All comments submitted
directly to the USPTO or provided on the Federal eRulemaking Portal
should include the docket number (PTO-P-2019-0011).
Comments may also be submitted by postal mail addressed to: Mail
Stop Patent Board, Director of the United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of ``Lead Administrative Patent Judge Christopher L. Crumbley
or Lead Administrative Patent Judge Susan L. C. Mitchell, PTAB Notice
of Proposed Rulemaking 2019.''
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message to more easily
[[Page 56402]]
share all comments with the public. The Office prefers the comments to
be submitted in plain text, but also accepts comments submitted in
searchable ADOBE[supreg] portable document format or MICROSOFT
WORD[supreg] format. Comments not submitted electronically should be
submitted on paper in a format that accommodates digital scanning into
ADOBE[supreg] portable document format.
The comments will be available for public inspection at the Patent
Trial and Appeal Board, located in Madison East, Ninth Floor, 600
Dulany Street, Alexandria, Virginia. Comments also will be available
for viewing via the Office's internet website, https://go.usa.gov/xXXFW, and on the Federal eRulemaking Portal. Because comments will be
made available for public inspection, information that the submitter
does not desire to be made public, such as address or phone number,
should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Christopher L. Crumbley, Lead
Administrative Patent Judge, or Susan L. C. Mitchell, Lead
Administrative Patent Judge, by telephone at (571) 272-9797.
SUPPLEMENTARY INFORMATION:
Executive Summary
Purpose: The proposed rules would amend the rules of practice for
IPR, PGR, and CBM proceedings that implement provisions of the Leahy-
Smith America Invents Act, Public Law 112-29, 125 Stat. 284 (2011)
(``AIA'') providing for trials before the Office. Pursuant to the AIA,
during the course of an IPR, PGR, or CBM, a patent owner may file a
motion to amend the patent by cancelling any challenged patent claim or
by proposing a reasonable number of substitute claims for each
challenged claim. 35 U.S.C. 316(d)(1), 326(d)(1).
Previously, relying on a general rule that a movant bore the burden
of proof with respect to motions before the Board (37 CFR 42.20(c)),
the Office placed the burden of showing the patentability of proposed
substitute claims on the patent owner moving to amend a patent in a
trial proceeding. On October 4, 2017, the United States Court of
Appeals for the Federal Circuit issued an en banc decision in Aqua
Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc) (``Aqua
Products''), 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 (See 83 FR 54319), the Office proposes to issue
specific rules applicable to motions to amend. The proposed rules
assign the burden of persuasion in relation to the patentability of
proposed substitute claims to the petitioner, but permit the Board to
exercise its discretion to reach a determination regarding
patentability of proposed substitute claims even when a petitioner does
not carry its burden of persuasion, when supported by the record and
when in the interests of justice. The proposed rules also assign the
burden of persuasion in relation to certain statutory and regulatory
requirements for a motion to amend (i.e., 35 U.S.C. 316(d) or 326(d);
37 CFR 42.121(a)(2), (a)(3), (b)(1), (b)(2), or 42.221(a)(2), (a)(3),
(b)(1), (b)(2)) to the patent owner, but permit the Board to exercise
its discretion to determine that the motion to amend complies with the
statutory and regulatory requirements of those sections even when the
patent owner does not carry its burden of persuasion, when supported by
the record and when in the interests of justice. The Office anticipates
that the Board will exercise such discretion only in rare
circumstances, as discussed herein. The proposed rules are consistent
with Aqua Products and also with current Board practice as described in
the precedential Board decision Lectrosonics, Inc. v. Zaxcom, Inc.,
Cases IPR2018-01129, 01130 (P.T.A.B. Feb. 25, 2019) (Paper 15), and as
such do not reflect a change from current practice.
The proposed rules would thus clarify the rules of practice for
amending claims in an IPR, PGR, or CBM to specify that the petitioner
bears the burden of showing that the proposed substitute claims are
unpatentable by a preponderance of the evidence, and would address
instances where a petitioner does not oppose an amendment or does not
meet its burden of persuasion in this regard, for example, where the
petitioner ceases to participate in the proceeding or declines to
oppose the patent owner's motion to amend. The proposed rules also
would specify that the patent owner bears the burden of showing, by a
preponderance of the evidence, that a motion to amend complies with
certain statutory and regulatory requirements, and would address
instances where a patent owner does not meet its burden of persuasion
in this regard. In instances where a party does not meet its burden,
the Board may, in the interests of justice, justify a determination
regarding the patentability of amended claims based on the record as a
whole.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background
On September 16, 2011, the AIA was enacted into law (Pub. L. 112-
29, 125 Stat. 284 (2011)), and within one year, the Office implemented
rules to govern Office practice for AIA trials, including IPR, PGR,
CBM, and derivation proceedings pursuant to 35 U.S.C. 135, 316 and 326
and AIA sec. 18(d)(2). See Rules of Practice for Trials Before the
Patent Trial and Appeal Board and Judicial Review of Patent Trial and
Appeal Board Decisions, 77 FR 48612 (Aug. 14, 2012); Changes to
Implement Inter Partes Review Proceedings, Post-Grant Review
Proceedings, and Transitional Program for Covered Business Method
Patents, 77 FR 48680 (Aug. 14, 2012); Transitional Program for Covered
Business Method Patents--Definitions of Covered Business Method Patent
and Technological Invention, 77 FR 48734 (Aug. 14, 2012). Additionally,
the Office published a Patent Trial Practice Guide to advise the public
on the general framework of the regulations, including the structure
and times for taking action in each of the new proceedings. See Office
Patent Trial Practice Guide, 77 FR 48756 (Aug. 14, 2012); see also
Office Patent Trial Practice Guide, August 2018 Update, 83 FR 39989
(Aug. 13, 2018); Office Patent Trial Practice Guide, July 2019 Update,
84 FR 33925 (July 16, 2018).
In prescribing these regulations, the Office considered ``the
effect of any such regulation on the economy, the integrity of the
patent system, the efficient administration of the Office, and the
ability of the Office to timely complete proceedings instituted'' as
required by statute. 35 U.S.C. 316(b), 326(b). The Office also
considered the public comments carefully and responded to the comments
in these final rules. Among the final rules, the Office promulgated
Sec. 42.20(c), which states that a ``moving party has the burden of
proof to establish that it is entitled to the requested relief.'' 37
CFR 42.20(c).
Previously, the Board interpreted the burden of proof requirement
of Sec. 42.20(c) to apply to motions to amend filed pursuant to 35
U.S.C. 316 and 326, including the requirement to show that the proposed
substitute claims were patentable over the prior art of record.
MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040 (P.T.A.B. July
15, 2015) (Paper 42) (``MasterImage''). Under MasterImage, which was
subsequently made precedential, the patent owner in a proceeding, as
the moving party in a
[[Page 56403]]
motion to amend, bore the burden of showing that the proposed
substitute claims were patentable. Id.
On October 4, 2017, the United States Court of Appeals for the
Federal Circuit issued its en banc decision in Aqua Products,
addressing the burden of persuasion regarding the patentability of
substitute claims presented in a motion to amend. The lead opinion of
the decision explains that, in the absence of rulemaking, the USPTO may
not place the burden of persuasion on the patent owner to show that
proposed substitute claims are patentable.
The only legal conclusions that support and define the judgment
of the court are: (1) The PTO has not adopted a rule placing the
burden of persuasion with respect to the patentability of amended
claims on the patent owner that is entitled to deference; and (2) in
the absence of anything that might be entitled deference, the PTO
may not place that burden on the patentee.
Id. at 1327 (O'Malley, J.).
A separate opinion joined-in-part by a majority of the en banc
court observed that ``it is well settled that regardless of which party
bears the ultimate burden of persuasion, the movant bears a burden of
production'' and that ``the Patent Office has adopted regulations that
address what a patent owner must submit in moving to amend the
patent.'' Id. at 1340-41 (Reyna, J., concurring in part) (citing 37 CFR
42.20(a), 42.22(a), 42.121(a)(2)(i)). The opinion explains that these
regulations require a patent owner to ``assist[ ] the Board to perform
its statutory obligation to `issue a final written decision with
respect to the patentability of . . . any new claim added under section
316(d).''' Id. at 1341 (omission in original) (quoting 35 U.S.C.
318(a)).
In view of the Federal Circuit's decision in Aqua Products, on
November 21, 2017, the Office issued formal guidance through a
memorandum from the Chief Administrative Patent Judge, explaining that,
in light of the Aqua Products decision, the Board will no longer place
the burden of persuasion on a patent owner with respect to
patentability of any proposed substitute claims presented in a motion
to amend. See Guidance on Motions to Amend in view of Aqua Products,
https://go.usa.gov/xQGAA (``Guidance Memo''). The Guidance Memo also
notes that a motion to amend must continue to satisfy the requirements
of 37 CFR 42.121 or 42.221 (e.g., provide a reasonable number of
substitute claims and written description support in relation to each
substitute claim), as applicable, that all parties continue to have a
duty of candor under 37 CFR 42.11, and that the page limits, type, and
timing of briefs remain unchanged. Id.
On December 22, 2017, the Federal Circuit issued a related decision
in Bosch Auto. Serv. Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir.
2017) (``Bosch''). In that decision, because the petitioner had settled
with the patent owner who had proposed substitute claims, the Federal
Circuit remanded the case to the Board to evaluate the patentability of
the proposed substitute claims. Id. (``[W]here the challenger ceases to
participate in the IPR and the Board proceeds to final judgment, it is
the Board that must justify any finding of unpatentability by reference
to the evidence of record in the IPR.'') (alteration in original)
(quoting Aqua Products, 872 F.2d at 1311 (O'Malley, J.)).
In view of the decisions by the Federal Circuit regarding motion to
amend practice and procedure in AIA trials, the Board de-designated as
precedential MasterImage, as well as de-designating as informative a
prior decision of the Board in Idle Free Sys., Inc. v. Bergstrom, Inc.,
Case IPR2012-00027 (P.T.A.B. June 11, 2013) (Paper 26), decisions in
which the Board panels stated that ``[t]he burden is not on the
petitioner to show unpatentability, but on the patent owner to show
patentable distinction over the prior art of record and also prior art
known to the patent owner.'' Id. at 7; see also MasterImage at 2
(quoting Idle Free). Concurrently, the Board designated an order issued
in Western Digital Corp. v. SPEX Techs., Inc., Cases IPR2018-00082,
00084 (P.T.A.B. Apr. 25, 2018) (Paper 13) (``Western Digital'') as
informative to provide an example of how panels can handle several
aspects of the motion to amend practice under the Aqua Products and
Bosch precedent. With respect to the burden of persuasion, the Western
Digital order explained that under the current state of the law ``the
burden of persuasion will ordinarily lie with the petitioner to show
that any proposed substitute claims are unpatentable'' and that the
``Board itself may justify any finding of unpatentability by reference
to evidence of record in the proceeding.'' Id. at 4.
On March 7, 2018, the Board designated as precedential an order in
Lectrosonics, Inc. v. Zaxcom, Inc., Cases IPR2018-01129, 01130
(P.T.A.B. Feb. 25, 2019) (Paper 15) (``Lectrosonics''), and de-
designated Western Digital. This order provides guidance regarding
statutory and regulatory requirements for a motion to amend in light of
Federal Circuit case law. For example, the order notes that, prior to
considering the patentability of any substitute claims, the Board first
must determine whether the patent owner has met the statutory and
regulatory requirements set forth in 35 U.S.C. 316(d) and 37 CFR
42.121, such as, that the motion proposes a reasonable number of
substitute claims and that the amendments do not broaden the scope of
the claims. Id. at 4-5. The order also sets out that ``the burden of
persuasion ordinarily will lie with the petitioner to show that any
proposed substitute claims are unpatentable by a preponderance of the
evidence.'' As discussed in more detail below, the proposed rules
herein allocate the burden of persuasion regarding the patentability of
proposed substitute claims in a motion to amend as set forth in
Lectrosonics and Western Digital.
On October 29, 2018, the Office published a ``Request for Comments
on Motion To Amend Practice and Procedures in Trial Proceedings Under
the America Invents Act Before the Patent Trial and Appeal Board'' in
the Federal Register (``Request for Comments''), seeking public comment
on various aspects of the Board's amendment practice. 83 FR 54319.
Among the questions on which the Board sought public input were the
following, directed to the allocation of the burden of persuasion:
15. Should the Office engage in rulemaking to allocate the burden
of persuasion regarding the patentability of proposed substitute claims
in a motion to amend as set forth in the Western Digital order? What
are the advantages or disadvantages of doing so?
16. If the Office continues to allocate the burden as set forth in
the Western Digital order, under what circumstances should the Board
itself be able to justify findings of unpatentability? Only if the
petitioner withdraws from the proceeding? Or are there situations where
the Board itself should be able to justify findings of unpatentability
when the petitioner remains in the proceeding? What are the advantages
or disadvantages?
Id. at 54325.\1\
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\1\ The October 2018 Request for Comments was published before
Western Digital was superseded by Lectrosonics, and thus refers only
to the Western Digital order. Both orders are identical in their
discussion of the burden of persuasion. Therefore, Questions 15 and
16 of the Request for Comments, and the public comments provided
thereto, are equally pertinent to the current Board precedent of
Lectrosonics.
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In response to the October 2018 Request for Comments, the Office
received 49 comments as of December 21, 2018 (the closing date for
comments), from intellectual property
[[Page 56404]]
organizations, trade organizations, other organizations, and
individuals. See https://go.usa.gov/xyeFy (collected responses to
Request for Comments).2 3 Approximately 25 of the commenters
provided specific responses to Questions 15 and 16 of the Request for
Comments. In response to Question 15, the majority of commenters were
in favor of the Office engaging in rulemaking to allocate the burden of
persuasion as set forth in Western Digital (as discussed in more detail
below). Only three commenters believed rulemaking was unnecessary
(either because the Board could simply continue to apply its own
precedent, or because the statute already allocates the burden of
persuasion). A minority of commenters stated that the Office should
engage in rulemaking, but that the burden of persuasion should be
placed on the patent owner.
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\2\ The October 2018 Request for Comments also sought comments
on a proposed amendment procedure in post-grant trial proceedings
that included the Board providing preliminary non-binding guidance
on the merits of a motion to amend, and an opportunity for a patent
owner to revise its motion to amend thereafter. The Office recently
addressed that portion of the Request for Comments separately in a
``Notice Regarding a New Pilot Program Concerning Motion To Amend
Practice and Procedures in Trial Proceedings Under the America
Invents Act Before the Patent Trial and Appeal Board.'' 84 FR 9497
(Mar. 15, 2019).
\3\ In response to the October 2018 Request for Comments, the
Office also received comments and questions relating to reissue or
reexamination as an alternative vehicle for claim amendments. The
Office recently addressed those comments and questions separately in
a ``Notice Regarding Options for Amendments by Patent Owner Through
Reissue or Reexamination During a Pending AIA Trial Proceeding
(April 2019).'' 84 FR 16654 (Apr. 22, 2019).
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Additionally, in response to Question 15, some commenters suggested
that even if the Office promulgates rules to place the burden of
persuasion on the petitioner on the issue of patentability of the
proposed substitute claims, the patent owner continues to bear the
burden to show that the motion to amend complies with the statutory
requirements of 35 U.S.C. 316(d) or 326(d) (for example, that the
amendment may not enlarge the scope of the claims), as well as the
regulatory requirements of 37 CFR 42.121 or 42.221 (for example, that
the motion set forth the support for the amendment in the original
disclosure of the patent).
In response to Question 16, the majority of responsive comments
stated that the Board should be able to justify findings of
unpatentability in any circumstance, for example, even when the
petitioner remains in the proceeding. Two commenters responded that the
Board should never be able to assume the burden of persuasion on
unpatentability itself, and three commenters believed that the Board
should be permitted to justify findings of unpatentability of proposed
substitute claims itself only in certain circumstances, for example,
when a petitioner ceases to participate in a proceeding.
The Office appreciates the public input provided in response to the
Request for Comments and has reviewed the individual responses
thoroughly. In light of the generally positive support for rulemaking
to allocate the burden of persuasion as set forth in the Western
Digital order (and subsequently made precedential in Lectrosonics), and
in the interest of providing greater clarity, certainty, and
predictability to parties participating in trial proceedings before the
Board, the Office now issues proposed rules allocating the burden of
persuasion. The rules would specify that the burden of persuasion as to
patentability of substitute claims proposed in a motion to amend is on
the petitioner. In addition, the rules would specify that the burden of
persuasion is on the patent owner to show that the motion complies with
the requirements of 35 U.S.C. 316(d) or 326(d) (requiring that a motion
to amend propose a reasonable number of substitute claims, and that
substitute claims do not enlarge scope of the original claims of the
patent or introduce new matter), as well as 37 CFR 42.121(a)(2),
(a)(3), (b)(1), and (b)(2), or 42.221(a)(2), (a)(3), (b)(1), and (b)(2)
(indicating, for example, that a motion to amend must set forth written
description support and support for the benefit of a filing date in
relation to each substitute claim, and respond to grounds of
unpatentability involved in the trial).
Irrespective of the burdens of persuasion discussed above, however,
the rules also would specify that the Board may, in the interests of
justice, exercise its discretion to grant or deny a motion to amend for
any reason supported by the evidence of record. Thus, in instances
where a party has not met its burden in relation to a motion to amend
or any substitute claims proposed therein, the Board may, in the
interests of justice, reach a determination regarding patentability,
based on the entirety of the evidence made of record in the proceeding.
The Office anticipates that the Board will exercise this discretion
only in rare circumstances. Any evidence relied on to support a
determination regarding patentability will be made of record in the
proceeding by the parties or the Board.
For instance, the Board may, in the interests of justice, exercise
its discretion to determine that a motion to amend complies with the
statutory and regulatory requirements of 35 U.S.C. 316(d) or 326(d) and
37 CFR 42.121(a)(2), (a)(3), (b)(1), and (b)(2), or 42.221(a)(2),
(a)(3), (b)(1), and (b)(2), even if a patent owner does not expressly
address or establish every requirement in its briefing. The Office
expects that the Board will do so only in circumstances where there is
easily identified and persuasive evidence that the motion complies with
the statutory and regulatory requirements, and only where the
petitioner has been afforded the opportunity to respond to that
evidence. The Board will rely on evidence of record when making such a
determination.
Furthermore, as supported by the majority of the comments received
in response to Question 16, under the proposed rules, the Board may
exercise its discretion to reach a determination regarding
patentability in instances where a petitioner does not oppose the
amendment or does not meet its burden of persuasion in relation to any
proposed substitute claim. The proposed rules limit such instances to
those in which the interests of justice warrant the Board reaching a
determination regarding patentability. Such instances may include, for
example, situations where the petitioner has ceased to participate in
the proceeding altogether (for example, as a result of settlement) or
where the petitioner remains in the proceeding but does not oppose the
motion to amend.
The interests of justice also may, for example, support the Board
exercising its discretion to deny a motion to amend when the petitioner
opposes the motion to amend and has failed to meet the burden of
persuasion, but where there is easily identified and persuasive
evidence of unpatentability in the record. In such situations, the
proposed rules would grant the Board discretion regarding whether to
make any determination of unpatentability that is supported by the
evidence of record, even if the ground of unpatentability has not been
advanced by the petitioner. The Office expects that the Board will do
so only in rare circumstances, and only where the patent owner has been
afforded the opportunity to respond to that evidence and related
grounds of unpatentability. Ordinarily, in cases where the petitioner
has participated fully and opposed the motion to amend, the Office
expects that the petitioner will bear the burden of persuasion and
there will be no need for the Board to independently justify a
determination of unpatentability.
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Discussion of Specific Rules
The USPTO proposes to amend 37 CFR part 42 as follows:
Section 42.121: Sec. 42.121 is proposed to be amended by adding a
new subsection (d) to state that a patent owner bears the burden of
persuasion to show that a motion to amend complies with certain
statutory and regulatory requirements, but that the petitioner bears
the burden of persuasion to show that any proposed substitute claims
are unpatentable. The new subsection (d) also states that in cases
where a party does not meet its burden, the Board may, in the interests
of justice, exercise its discretion to grant or deny a motion to amend
for any reason supported by the evidence of record.
Section 42.221: Sec. 42.221 is proposed to be amended by adding a
new subsection (d) to state that a patent owner bears the burden of
persuasion to show that a motion to amend complies with certain
statutory and regulatory requirements, but that the petitioner bears
the burden of persuasion to show that any proposed substitute claims
are unpatentable. The new subsection (d) also states that in cases
where a party does not meet its burden, the Board may, in the interests
of justice, exercise its discretion to grant or deny a motion to amend
for any reason supported by the evidence of record.
Rulemaking Considerations
A. Regulatory Flexibility Act: For the reasons set forth herein,
the Senior Counsel for Regulatory and Legislative Affairs, Office of
General Law, United States Patent and Trademark Office has certified to
the Chief Counsel for Advocacy of the Small Business Administration
that changes set forth in this notice of proposed rulemaking would not
have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b).
The changes set forth in this notice of proposed rulemaking are to
set forth expressly the respective burdens of persuasion on the parties
regarding a motion to amend in an AIA proceeding. These changes are
consistent with relevant precedential decisions of the Board and
Federal Circuit, and as such do not reflect a change from current
practice. The changes do not create additional procedures or
requirements or impose any additional compliance measures on any party,
nor do these changes cause any party to incur additional cost.
Therefore, any requirements resulting from these proposed changes are
of minimal or no additional burden to those practicing before the
Board.
For the foregoing reasons, the proposed changes in this notice of
proposed rulemaking would not have a significant economic impact on a
substantial number of small entities.
B. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
C. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563 (Jan. 18,
2011). Specifically, the Office has, to the extent feasible and
applicable: (1) Made a reasoned determination that the benefits justify
the costs of the rules; (2) tailored the rules to impose the least
burden on society consistent with obtaining the regulatory objectives;
(3) selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector and the public as a whole,
and provided on-line access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
D. Executive Order 13771 (Reducing Regulation and Controlling
Regulatory Costs): This proposed rule is not expected to be an
Executive Order 13771 (Jan. 30, 2017) regulatory action because this
proposed rule is not significant under Executive Order 12866.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
G. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
H. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
I. Executive Order 12630 (Taking of Private Property): This
rulemaking will not affect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
J. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the
United States Patent and Trademark Office will submit a report
containing the rule and other required information to the United States
Senate, the United States House of Representatives, and the Comptroller
General of the Government Accountability Office. The changes in this
notice of proposed rulemaking are not expected to result in an annual
effect on the economy of 100 million dollars or more, a major increase
in costs or prices, or significant adverse effects on competition,
employment, investment, productivity, innovation, or the ability of
United States-based enterprises to compete with foreign-based
enterprises in domestic and export markets. Therefore, this rulemaking
is not a ``major rule'' as defined in 5 U.S.C. 804(2).
K. Unfunded Mandates Reform Act of 1995: The changes set forth in
this notice of proposed rulemaking do not involve a Federal
intergovernmental mandate that will result in the expenditure by State,
local, and tribal governments, in the aggregate, of 100 million dollars
(as adjusted) or more in any one year, or a Federal private sector
mandate that will result in the expenditure by the private sector of
100 million dollars (as adjusted) or more in any one year, and will not
significantly or uniquely affect small governments. Therefore, no
actions are necessary under the provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
L. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
M. National Technology Transfer and Advancement Act: The
requirements of
[[Page 56406]]
section 12(d) of the National Technology Transfer and Advancement Act
of 1995 (15 U.S.C. 272 note) are not applicable because this rulemaking
does not contain provisions which involve the use of technical
standards.
N. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501-3549) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the
public. This proposed rulemaking does not involve an information
collection requirement that is subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501-3549). This rulemaking does not add any additional
information requirements or fees for parties before the Board.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall any person be subject to, a penalty for
failure to comply with a collection of information subject to the
requirements of the Paperwork Reduction Act unless that collection of
information displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 42
Administrative practice and procedure, Inventions and patents,
Lawyers.
For the reasons set forth in the preamble, the Office proposes to
amend part 42 of title 37 as follows:
PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
0
1. The authority citation for 37 CFR part 42 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316,
and 321-326; Pub. L. 112-29, 125 Stat. 284; and Pub. L. 112-274, 126
Stat. 2456.
0
2. Amend Sec. 42.121 by adding paragraph (d) to read as follows:
Sec. 42.121 Amendment of the patent.
* * * * *
(d) Burden of Persuasion. On a motion to amend:
(1) A 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;
(2) A petitioner bears the burden of persuasion to show, by a
preponderance of the evidence, that any proposed substitute claims are
unpatentable; and
(3) Irrespective of paragraphs (d)(1) and (2) of this section, the
Board may, in the interests of justice, exercise its discretion to
grant or deny a motion to amend for any reason supported by the
evidence of record.
0
3. Amend Sec. 42.221 by adding paragraph (d) to read as follows:
Sec. 42.221 Amendment of the patent.
* * * * *
(d) Burden of Persuasion. On a motion to amend:
(1) A 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. 326(d), as well
as paragraphs (a)(2), (3), (b)(1), and (2) of this section;
(2) A petitioner bears the burden of persuasion to show, by a
preponderance of the evidence, that any proposed substitute claims are
unpatentable; and
(3) Irrespective of paragraphs (d)(1) and (2) of this section, the
Board may, in the interests of justice, exercise its discretion to
grant or deny a motion to amend for any reason supported by the
evidence of record.
Dated: October 10, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2019-22768 Filed 10-21-19; 8:45 am]
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