U.S. Patent and Trademark Office seeks stakeholder input on Patent Trial and Appeal Board decision-making procedures

White & Case Tech Newsflash

The U.S. Patent and Trademark Office's interim procedures for reviewing decisions of the Patent Trial and Appeal Board are receiving increased scrutiny.  On July 20, 2022, the PTO issued a notice announcing notice-and-comment rulemaking and requesting public comments on several recently implemented interim review procedures.  The next day, the U.S. Government Accountability Office released a report identifying concerns among PTAB judges on the "clarity and implementation of oversight practices and policies."   According to the GAO, a large majority of surveyed judges (75%) responded that the oversight practiced by PTO directors and PTAB management has affected their independence.

The PTO's notice gives stakeholders in PTAB proceedings an opportunity to give input on—and possibly help revise—the PTAB's decision-making processes, which, until recently, have been unclear. These procedures have important implications for tech companies and patent owners that regularly litigate patent validity through the PTAB.

Director Review

In June 2021, the U.S. Supreme Court ruled in Arthrex that the PTO Director must have the ability to review PTAB final written decisions, such as in inter partes review or post-grant review proceedings.  Shortly after, the PTO posted interim "Q&As" for Director review on its website. The PTO has updated the website several times, but without a formal notice-and-comment rulemaking, until now.

Under the current interim process:

• Parties to an inter partes review or post-grant review can request de novo Director review of final written decisions. Requests are limited to 15 pages, without new arguments or evidence.
• The parties can seek review by the Director or rehearing by the initial PTAB panel, but not both.
• An 11-member Advisory Committee reviews the requests for the Director and recommends decisions.

To date, the PTO has denied the vast majority of requests for Director review—only 2.5% of completed requests were granted. 

The PTO's notice seeks input about whether to change the Director process, whether to allow third parties to request review, whether review should include decisions beyond IPRs and PGRs, and the appropriate criteria for initiating review. 

Circulation Judge Pool

Currently, a Circulation Judge Pool reviews various PTAB decisions before issuance. The PTO modeled this process after the Court of Appeals for the Federal Circuit's ten-day internal circulation process, which allows all judges to comment on precedential opinions before they publish. Under the current PTAB procedures:

• The Circulation Judge Pool is a representative group of at least eight non-management PTAB judges who collectively have technical and scientific backgrounds and legal experience representative of the PTAB judges as a whole.
• For each reviewed PTAB decision, the Circulation Judge Pool provides the panel with information regarding potential conflicts or inconsistencies with relevant authorities.
• Any panel member, at his or her sole discretion, may also optionally consult with one or more members of PTAB management about a decision prior to issuance.

The USPTO notice seeks feedback on these Circulation Judge Pool procedures.

Precedential Opinion Panel

The notice also discusses the Precedential Opinion Panel, which determines whether to rehear PTAB decisions and designate them as precedential. The notice asks: "Are there considerations the USPTO should take with regard to the fact that decisions made on Director review are not precedential by default, and instead are made and marked precedential only upon designation by the Director?"

Takeaways

Comments on the PTO's notice are due September 19, 2022. This rulemaking presents an early case study of Director Kathi Vidal's rulemaking procedures—what is working and what is not.  The rulemaking also could expand the options for parties in inter partes review and post-grant reviews to seek review of final written decisions, and at a minimum, lead to concrete procedures for requesting Director review.

_{1 The current interim process for PTAB decision circulation and internal PTAB review is accessible at https://www.uspto.gov/interim-process-ptab-decision-circulation-and-internal-ptab-review.
2 Request for Comments on Director Review, Precedential Opinion Panel Review, and Internal Circulation and Review of Patent Trial and Appeal Board Decisions, 87 Fed. Reg. 43,249 (July 20, 2022), at https://www.federalregister.gov/documents/2022/07/20/2022-15475/request-for-comments-on-director-review-precedential-opinion-panel-review-and-internal-circulation.
3 https://www.gao.gov/products/gao-22-106121.
4 United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021).}
 

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