Boston Patent Law Association Response to USPTO Request for Comments on Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the PTAB

Jonathan Roses was the lead author on behalf of the Boston Patent Law Association's (BPLA’s) Patent Office Practice Committee of a December 2018 Response to USPTO 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 (PTAB). The Response recommended that the USPTO evaluate its rulemaking authority with respect to allowing for revisions to previously filed motions to amend and consider modifying the proposals for additional briefing given the substantially increased burden on parties to these proceedings. Finally, the Response conveyed the BPLA’s position that the PTAB should not be permitted to justify findings of unpatentability based on grounds not raised by a Petitioner in the proceeding.