37 C.F.R. § 42.121

Amendment of the patent

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(a) Motion to amend—(1) Original motion to amend. A patent owner may file one original motion to amend a patent, but only after conferring with the Board.

(i) Due date. Unless a due date is provided in a Board order, an original motion to amend must be filed no later than the filing of a patent owner response.

(ii) Request for preliminary guidance. If a patent owner wishes to receive preliminary guidance from the Board as discussed in paragraph (e) of this section, the original motion to amend must include the patent owner's request for that preliminary guidance.

(2) Scope. Any motion to amend may be denied where:

(i) The amendment does not respond to a ground of unpatentability involved in the trial; or

(ii) The amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.

(3) A reasonable number of substitute claims. Any motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims. The presumption is that only one substitute claim will be needed to replace each challenged claim, and it may be rebutted by a demonstration of need.

(b) Content. Any motion to amend claims must include a claim listing, which claim listing may be contained in an appendix to the motion, show the changes clearly, and the motion must set forth:

(1) The support in the original disclosure of the patent for each proposed substitute claim; and

(2) The support in an earlier-filed disclosure for each claim for which the benefit of the filing date of the earlier-filed disclosure is sought.

(c) Additional motion to amend. Except as provided in paragraph (f) of this section, any additional motion to amend may not be filed without Board authorization. An additional motion to amend may be authorized when there is a good cause showing or a joint request of the petitioner and the patent owner to materially advance a settlement. In determining whether to authorize such an additional motion to amend, the Board will consider whether a petitioner has submitted supplemental information after the time period set for filing a motion to amend in paragraph (a)(1)(i) of this section.

(d) Burden of persuasion. On any motion to amend:

(1) Patent owner's burden. A patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies with the requirements of paragraphs (1) and (3) of 35 U.S.C. 316(d), as well as paragraphs (a)(2) and (3) and (b)(1) and (2) of this section;

(2) Petitioner's burden. A petitioner bears the burden of persuasion to show, by a preponderance of the evidence, that any proposed substitute claims are unpatentable; and

(3) Exercise of Board discretion. Irrespective of paragraphs (d)(1) and (2) of this section, the Board may exercise its discretion to grant or deny a motion to amend or raise a new ground of unpatentability in connection with a proposed substitute claim. Where the Board exercises its discretion to raise a new ground of unpatentability in connection with a proposed substitute claim, the parties will have notice and an opportunity to respond. In the exercise of this discretion under this paragraph (d)(3), the Board may consider all evidence of record in the proceeding. The Board also may consider and make of record:

(i) Any evidence in a related proceeding before the Office and evidence that a district court can judicially notice; and

(ii) Information identified in response to a Board-initiated examination assistance. The Board may request the examination assistance at any time after any motion to amend has been filed if no petitioner opposes or all petitioners cease to oppose the motion to amend, or if the Board determines that a deficient prior art challenge in an opposition to the motion to amend warrants a search for additional prior art. The Board's request for examination assistance and the results of such assistance will be made of record.

(4) Determination of unpatentability. Where the Board exercises its discretion under paragraph (d)(3) of this section, the Board must determine unpatentability based on a preponderance of the evidence of record.

(e) Preliminary guidance. (1) In its original motion to amend, a patent owner may request that the Board provide preliminary guidance setting forth the Board's initial, preliminary views on the original motion to amend, including whether the parties have shown a reasonable likelihood of meeting their respective burdens of persuasion as set forth under paragraphs (d)(1) and (2) of this section and notice of any new ground of unpatentability discretionarily raised by the Board under paragraph (d)(3) of this section. The Board may, upon issuing the preliminary guidance, determine whether to request the Chief Administrative Patent Judge to extend the final written decision deadline more than one year from the date a trial is instituted in accordance with § 42.100(c) and whether to extend any remaining deadlines under § 42.5(c)(2).

(2) Any preliminary guidance provided by the Board on an original motion to amend will not be binding on the Board in any subsequent decision in the proceeding, is not a “decision” under § 42.71(d) that may be the subject of a request for rehearing or Director Review, and is not a final agency action.

(3) In response to the Board's preliminary guidance, a patent owner may file a reply that responds to the petitioner's opposition to the motion to amend and/or the preliminary guidance, or a revised motion to amend as discussed in paragraph (f) of this section. The reply or revised motion to amend may be accompanied by new evidence. The petitioner may file a sur-reply that is limited to responding to the preliminary guidance and/or arguments made in the patent owner's reply brief. The sur-reply may not be accompanied by new evidence, but may comment on any new evidence filed with the reply and/or point to cross-examination testimony of a reply witness, if relevant to the arguments made in the reply brief.

(4) If a patent owner does not file either a reply or a revised motion to amend after receiving preliminary guidance from the Board, the petitioner may file a reply to the preliminary guidance, but such a reply may only respond to the preliminary guidance and may not be accompanied by new evidence. If the petitioner files a reply in this context, a patent owner may file a sur-reply, but that sur-reply may only respond to the petitioner's reply and may not be accompanied by new evidence.

(f) Revised motion to amend. (1) Irrespective of paragraph (c) of this section, a patent owner may, without prior authorization from the Board, file one revised motion to amend after receiving an opposition to the original motion to amend or after receiving the Board's preliminary guidance. The Board may, upon receiving the revised motion to amend, determine whether to request the Chief Administrative Patent Judge to extend the final written decision deadline more than one year from the date a trial is instituted in accordance with § 42.100(c) and whether to extend any remaining deadlines under § 42.5(c)(2).

(2) A revised motion to amend must be responsive to issues raised in the preliminary guidance or in the petitioner's opposition to the motion to amend and must include one or more new proposed substitute claims in place of the previously presented substitute claims, where each new proposed substitute claim presents a new claim amendment.

(3) If a patent owner files a revised motion to amend, that revised motion to amend replaces the original motion to amend in the proceeding.

[89 FR 76429, Sept. 18, 2024]

Notes of Decisions

Cited in 33 cases (17 in the last 5 years), 2013–2025 · leading case: Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).

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Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). · cites it 27× “Although the Board expressly found that Aqua’s amendments complied with the requirements of § 316(d) and 37 C.F.R. § 42.121 (a)(2)(i)–(ii) (2015), the Board concluded Aqua had failed to prove the substitute claims were patentable.”

Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016). · cites it 6× “Mentor’s motion was initially denied because the replacement claims were not listed as part of the motion, but were rather included in an appendix which the Board found to be contrary to 37 C.F.R. § 42.121 (previous version) (requiring that a “motion to amend claims must include…”

Nike, Inc. v. Adidas Ag, 812 F.3d 1326 (Fed. Cir. 2016). · cites it 2× “The PTO interpreted this limit in 37 C.F.R. § 42.121 (a)(3) by explaining that “[t]he presumption is that only one substitute claim would be needed to replace each challenged claim.”

Uniloc 2017 LLC v. Hulu, LLC, 966 F.3d 1295 (Fed. Cir. 2020). · cites it 4× “§ 316 (d)(1)(B) (allowing a patentee to “pro- pose a reasonable number of substitute claims”); § 318(a)– (b) (governing the incorporation of claims added via the op- eration of § 316(d)); 37 C.F.R. § 42.121 (a)(3) (“The pre- sumption is that only one substitute claim would be…”

Sisvel Int'l S.A. v. Sierra Wireless, Inc., 81 F.4th 1231 (Fed. Cir. 2023). · cites it 5× “§ 316 (d) and 37 C.F.R. § 42.121 . As relevant to this appeal, 35 U.”

Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015). “Second is 37 C.F.R. § 42.121 , which imposes specific requirements on the amendment process.”

PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC, 815 F.3d 734 (Fed. Cir. 2016). “§ 316 (d)(1); 37 C.F.R. § 42.121 (a). Despite the important differences between the new AIA proceedings and the earlier examinational proceedings, the PTO applies the same claim construction standard — the broadest reasonable interpretation — in both types of proceedings.”

Sirona Dental Sys. GMBH v. Institut Straumann AG, Dental Wings Inc., 892 F.3d 1349 (Fed. Cir. 2018). “After institution, Sirona filed a contingent motion to amend the claims pursuant to 37 C.F.R. § 42.121 . Petitioners opposed the motion, arguing that the proposed substitute claims would have been obvious based on Mushabec, U.”

Prolitec, Inc. v. Scentair Tech., Inc., 807 F.3d 1353 (Fed. Cir. 2015). · cites it 2× “37 C.F.R. § 42.121 (a)(2). “Ground of unpatentability” in this regulation refers to the statutory basis of the petition for inter partes review, for the regulations require the petitioner to identify “[t]he specific statutory grounds under 35 U.”

Veritas Tech. LLC v. Veeam Software Corp., 835 F.3d 1406 (Fed. Cir. 2016). “§ 316 (d) and 37 C.F.R. § 42.121 , asking that, if the Board found the existing claims unpatentable, it allow proposed new claims 26 and 27, which attempt to claim more expressly what Veritas was urging as the proper construction of the existing 'claims.”

Hunting Titan, Inc. v. Dynaenergetics Eur. Gmbh, 28 F.4th 1371 (Fed. Cir. 2022). · cites it 2× “37 C.F.R. § 42.121 (d) (emphasis added); see Rules of Prac- tice to Allocate the Burden of Persuasion on Motions to Amend in Trial Proceedings Before the Patent Trial and Appeal Board, 85 Fed.”

Securus Tech., Inc. v. Global Tel Link Corp., 685 F. App'x 979 (Fed. Cir. 2017). · cites it 3× “The Board also denied Securus’s motions to amend because the proposed amendments were not made in response to a ground of unpa-tentability raised in the IPRs as required by 37 C.F.R. § 42.121 . Securas timely appealed each of the Board’s decisions.”

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