Data / Federal rules / 2024-21134
Rules Governing Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board
The Patent and Trademark Office published this final rule in the Federal Register on September 18, 2024. It took effect on October 18, 2024.
SpecStream is the live web data engine for teams and agents. It reads every rule and proposed rule in the Federal Register each morning, and this page is that reading. Name your industry once and new rules, comment deadlines and effective dates arrive in your sheet, CRM, Slack or agent as they are published.
What the agency says
The United States Patent and Trademark Office (Office or USPTO) modifies its rules of practice governing amendment practice in trial proceedings under the Leahy-Smith America Invents Act (AIA) to make permanent certain provisions of the Office's motion to amend pilot program (MTA pilot program) and to revise the rules that allocate burdens of persuasion in connection with motions to amend (MTAs). These rules provide a patent owner with the option of issuance of preliminary guidance in response to an MTA and the option of filing one additional revised MTA. Further, these rules clarify that a preponderance of evidence standard applies to any new ground of unpatentability raised by the Board, and that when exercising the discretion to grant or deny an MTA or to raise a new ground of unpatentability, the Board may consider all evidence of record in the proceeding. The rules further provide that the Board may consider information identified in response to a Board-initiated request for examination assistance, and that the results of that assistance will be added to the record. The rules better ensure the Office's role of issuing robust and reliable patents, and the predictability and certainty of post-grant trial proceedings before the Board. These rules relate to the Office trial practice for inter partes review (IPR), post-grant review (PGR), and derivation proceedings that implemented provisions of the AIA providing for trials before the Office.
Key facts
- Document number
- 2024-21134
- Type
- Final rule
- Action
- Final rule
- Agency
- Commerce Department; Patent and Trademark Office
- Published
- September 18, 2024
- Takes effect
- October 18, 2024
- Dates
- This rule is effective October 18, 2024.
- Docket
- Docket No. PTO-P-2020-0060
- Regulation ID (RIN)
- 0651-AD50
- Code of Federal Regulations
- 37 CFR 42
- Topics
- Administrative practice and procedure; Inventions and patents; Lawyers
- Pages
- 11
Other documents from the Patent and Trademark Office
Everything from the Patent and Trademark Office · Rules on administrative practice and procedure · Rules on inventions and patents · Rules on lawyers · Published in September 2024
Read from the Federal Register API, last updated 2026-10-23. The document on federalregister.gov is the official record; dates and dockets can change through later corrections. Free to reuse with credit to SpecStream under CC BY 4.0.