JAPAN INTELLECTUAL PROPERTY ASSOCIATIONASAHI SEIMEI OTEMACHI BLDG.18F
6-1 Otemachi 2-chome
Chiyoda-ku Tokyo, 100-0004, JAPANTEL: 81 3 5205 3321
FAX: 81 3 5205 3391
URL: http://www.jipa.or.jp/

To: United States Patent and Trademark Office
MTABurden2019@uspto.gov
Dec.17,2019
Re: Rules of Practice to Allocate the Burden of Persuasion on Motions To
Amend in Trial Proceedings Before the Patent Trial and Appeal Board
Director of United States Patent and Trademark Office,1.

The Japan Intellectual Property Association (JIPA) is one of theworld's largest IP user organizations, with a membership of 1334 companies(as of November 6, 2019), most of which are Japanese companies.
Considering that member companies file many US patent applications, JIPA
has carefully reviewed the Rules of Practice To Allocate the Burden ofPersuasion on Motions To Amend in Trial Proceedings Before the Patent
Trial and Appeal Board (PTAB) published by USPTO in the Federal Register(FR) dated October 22, 2019.

Based also on the review of the Request forComments on Motion To Amend Practice and Procedures in Trial
Proceedings Under the America Invents Act Before the PTAB published inFR dated October 29, 2018, JIPA respectfully submits comments on theabove proposed rules. It would be appreciated if USPTO would take ourcomments into consideration in determining changes to the rules.
(1) With respect to the burden of persuasion on claim amendment (37 CFR
42.121(d)(1), 42.221(d)(1), 42.121(d)(2), and 42.221(d)(2)A patent owner should bear the burden of persuasion to show thatan amended claim satisfies the requirements of 35 USC 316(d)(1)(3), 35
USC 326(d)(1)(3), and 37 CFR 42.121(a)(2), (3), (b)(1), and (2), and theproposed changes to the rules are considered reasonable. However, werespectfully provide comments from the viewpoint of the balance relative tothe burden of persuasion borne by an applicant or a patent owner on thevalidity of a patent at the examination stage.
Regarding the patent examination, 37 CFR 1.111(c) recites "Inamending in reply to a rejection of claims in an application or patent under1

reexamination, the applicant or patent owner must clearly point out thepatentable novelty which he or she thinks the claims present in view of thestate of the art disclosed by the references cited or the objections made. The
applicant or patent owner must also show how the amendments avoid suchreferences or objections."

For example, when an examiner rejects a claim

based on 35 USC 103 at the examination stage, the burden of persuasion toshow that the claim is prima facie obvious is placed on the examiner.

Then,

in response to a reason for rejection based on the prima facie obviousness,
the applicant has to prove that the reason for rejection and a prior art
document are avoided.

When this idea is applied to an inter partes review,

we consider as follows. In an inter partes review, a petitioner that denies
the patentability proves a reason for invalidity (reasonable likelihood)through a petition, which institutes a trial. In the trial proceeding, if thepatent owner makes an amendment to a claim, we consider that the patent
owner should bear the burden of persuasion to show that the amendment
avoids the reason for invalidity based on the submitted evidence and that
this creates a balance in comparison with the burden of persuasion at theexamination stage. In other words, we consider that it is fair that the patent
owner should bear the burden of persuasion, which is comparable with thatat the examination stage, to show that the amended claim avoids the reason
for invalidity of the patent.
In addition, 37 CFR 1.111 for the examination stage gives separate
stipulations: 37 CFR 1.111(b) stipulates that the applicant must reply to theOffice action; and 37 CFR 1.111(c) stipulates that the applicant must show
how the amendments avoid such rejections.

Looking at an inter partes

review, 37 CFR 42.121(a)(2)(i) states that the amendment responds to aground of unpatentability in the inter partes review. When these arecompared, 37 CFR 42.121(a)(2)(i) may include the stipulation that theamendment avoids the reason for invalidity, but the inter partes review
seems to lack a stipulation corresponding to 37 CFR 1.111(c). If it includes
the statement that the reason for invalidity is avoided,

it would beappreciated if USPTO would consider that an item therefor should beseparately established.
(2) With respect to the determination in the discretion of the Board onwhether an MTA is granted or denied (37 CFR 42.121(d)(3) and 42.221(d)(3))
2

It is understood that the proposed changes to the rules clearlystipulate that the Board can exercise its discretion to grant or deny an MTA.
The FR dated October 22, 2019 indicates that the Board can exercise its
discretion to reach a determination regarding the patentability, although
only in instances where a petitioner does not oppose an amendment or does
not meet its burden of persuasion in this regard, for example. If theproposed changes to the rules cover not only MTAs but also subsequent
proceedings on a determination regarding patentability and the like, itwould be appreciated if USPTO would make clear statements on that point.
Yours sincerely,Akitoshi YAMANAKAManaging Director3