The USPTO recently updated the rules of practice governing motions to amend during trials before the Patent Trial and Appeal Board (PTAB). The revised rules specify that the petitioner has the burden of persuasion with respect to unpatentability of substitute claims filed. The revised rules also specify that the patent owner has the burden to show that the substitute claims comply with applicable statutes and regulations. For example, the patent owner has the burden to show that the claims do not enlarge the scope of the patent’s claims, that the claims respond to ground of unpatentability, and that the claims are supported in the application-as-filed and priority applications. The revised rules apply to motions to amend filed on or after January 20, 2021. [PDF]