NYIPLA Submits Comments to the U.S. Patent Office with Respect to its Proposed Motion to Amend Practice Rules 

The New York Intellectual Property Law Association (NYIPLA) has submitted comments in response to the U.S. Patent and Trademark Office’s (USPTO’s) “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,” Federal Register Notice, October 29, 2018, Vol. 83, No. 209 (Docket No. PTO-P-2018-0062) (hereinafter “the RFC”).   While the NYIPLA’s comments acknowledge that the current motion to amend (“MTA”) process in AIA trials should be modified to make the process useful and fair to the petitioners and patent owners alike, the comments point out that the changes to MTA practice proposed in the RFC create the risk of other problems and require more thought before they can be implemented, particularly in view of the cost, complexity, and rushed nature of the proposed procedural changes.   The comments therefore suggest ways to reduce those risks/problems, such as by extending proposed timeframes.  The comments also supports rulemaking by the USPTO to allocate the burden of persuasion regarding the patentability of proposed substitute claims consistent with the statutory framework and as set forth in the Western Digital order.

Click HERE to read the full submission.