“The interim process notably (and in my view, beneficially) does away with PTAB management review and continues with peer review under a new name and with some helpful changes/clarifications.”
In a blog post on May 24, just over a month after being sworn in, Director Kathi Vidal stated that one of her priorities is to “accelerate change and communications by adopting interim processes and procedures while [the USPTO] work[s] to finalize.” A mere two days later, the U.S. Patent and Trademark Office (USPTO) issued one such interim process for Patent Trial and Appeal Board (PTAB) decision circulation and internal PTAB review. In addition to speed, this interim process is consistent with Director Vidal’s emphasis on transparency by ensuring that the parties to a proceeding and the public know the identity of the decision-makers. Nevertheless, as discussed further in this article, Director Vidal and PTAB Executive Management must be proactive in identifying areas for further publicly-issued guidance. Otherwise, consistency in PTAB decision-making is likely to suffer.
Previous Processes: Director and PTAB Management Involved Pre-Issuance
The new interim guidance provides a window into the previous internal processes at the PTAB for review of decisions before issuance. To my knowledge, the interim guidance is the first time the USPTO has publicly acknowledged both internal review mechanisms: (1) peer review and (2) PTAB management review. Peer review within the PTAB has historically been called the [America Invents Act] AIA Review Committee or ARC. During my time as an Administrative Patent Judge (APJ) at the PTAB, ARC reviewed AIA institution decisions, final written decisions, decisions granting rehearing, and other significant orders for which a panel requested review. ARC’s comments were suggestions, and a PTAB panel was not required to implement them. In my view, ARC provided helpful information to PTAB panels because, as compared to any single judge, ARC had a broader view of the issues coming before the PTAB, and therefore, ARC was in a position to identify issues of first impression and possible areas of inconsistency in PTAB decision-making.
Before the interim process, certain members of PTAB management reviewed certain decisions pre-issuance for adherence with USPTO policy. PTAB management review focused on specific issues of interest to the Director and PTAB Executive Management, such as discretionary issues, applicant admitted prior art and subject matter eligibility. The interim process notes that “PTAB panels considered PTAB management feedback prior to issuance.” The interim process notes that ARC’s comments “were suggestions and were not binding on the panel,” but the interim process includes no such statement about PTAB management review’s feedback.
The New Interim Process: Pre-Issuance, the PTAB Panel is King
The interim process notably (and in my view, beneficially) does away with PTAB management review and continues with peer review under a new name and with some helpful changes/clarifications. Specifically, the interim process gives ARC a new acronym, CJP (Circulation Judge Pool), and expands the types of decisions it reviews beyond the AIA sphere to include decisions on remand from the U.S. Court of Appeals for the Federal Circuit; inter partes reexamination appeal decisions; and certain categories of ex parte appeal, ex parte reexamination appeal, and reissue appeal decisions, as designated by PTAB management. Other than the expanded pool of decisions, the role of CJP appears similar to that of ARC.
Importantly, the interim process clarifies that the “panel has final authority and responsibility for the content of a decision, and determines whether and how to incorporate feedback from the CJP.” In other words, the CJP’s edits are optional, and the panel is free to disregard them.
The role of the Director and PTAB Executive Management is also noteworthy because, according to the interim process, they have none. The CJP can identify significant draft decisions to PTAB Executive Management, but PTAB Executive Management will not discuss those decisions with the Director, the Director Review Advisory Committee, or the Screening Committee for Precedential Opinion Panel (POP) Review until after issuance. The interim process states: “the Director is not involved, pre-issuance, in directing or otherwise influencing any panel decisions,” and “[t]he Director is not involved in directing or otherwise influencing the paneling for any proceeding before the PTAB.” Under the interim process, PTAB management also has no role in decision-making pre-issuance and cannot even make suggestions to the panel, either directly or through the CJP, unless requested.
Motivation for the Interim Process
I cannot say with certainty what prompted Director Vidal to issue the new interim process, but it takes no stretch of the imagination to look to the pending GAO investigation requested by Representatives Johnson and Issa. A year ago, both Congressmen sent a letter to the Comptroller General of the GAO requesting the GAO to review, among other things, the “mechanisms available to the Director to influence APJ decisions” and “how often the Director, or a designate thereof, has directly influenced or changed a decision in a specific AIA case.” In my view, the interim process shows, regardless of what may have transpired under past Directors, Director Vidal emphatically has no plans to use any mechanisms to influence panels pre-issuance other than transparent precedent and publicly-issued policy. I applaud this step – it assuages Congress’ due process concerns with using such mechanisms and will bolster public confidence that the PTAB is following transparent processes.
The PTAB has over 200 experienced, capable, and skilled APJs. Under the interim process, these judges have autonomy over their decisions; they are free to tackle tough issues and issues of first impression in an intellectually honest way; they are free to concur or dissent; in short, they are the masters of their own domain. The Director and PTAB Executive management will face a two-fold challenge going forward: (1) avoiding the temptation to use secretive but faster processes to address APJ decisions with which they disagree and (2) ensuring consistency with more transparency and APJ autonomy. First, APJs routinely decide complex and challenging cases with issues over which reasonable minds could disagree on both result and reasoning. The Director and PTAB Executive Management should stay the course and use transparent methods to address such cases as needed, such as through Director-initiated or party requested Director review, the Precedential Opinion Panel process, or public guidance (e.g., notice-and-comment rulemaking). These processes take time, and the Director and PTAB Executive Management may be tempted to resort to less transparent processes like the prior management review process. They should resist this temptation, however, because doing so would revive the due process concerns raised by Congress and undercut party and public confidence in PTAB processes.
Second, the Director and PTAB Executive Management should proactively look for issues that would benefit from additional guideposts to ensure consistency of panel decision-making. Issues before the PTAB continue to evolve as parties pursue new strategies for challenging patents and addressing those challenges, and as the Supreme Court and Federal Circuit issue decisions relevant to patent law in general and the PTAB in particular. The Director review process provides a reactionary way to address inconsistency but will expend significant party and agency resources. The Director and PTAB Executive Management can improve the efficiency of this process and panel decision-making by being mindful of the toolkit that APJs need to make consistent decisions in the first instance.
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