USPTO Proposes Rule to Mitigate Fears that PTAB Decisions are Being Influenced by Leadership

“Proposed Section 43.3(d) of the SOP4 would delegate the Director’s power to designate and re-designate PTAB panels to the Chief Administrative Patent Judge and would also ‘prohibit the Director from directing or otherwise influencing the paneling or repaneling of any proceeding prior to issuance of the panel decision.’”

RuleFollowing review of more than 4,300 comments, the U.S. Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (NPRM) today that makes changes to the processes governing internal pre-issuance circulation and review of decisions within the Patent Trial and Appeal Board (PTAB). The stated goal of the policy change is to “promote consistent, clear, and open decision-making processes while protecting judicial independence and increasing transparency of USPTO processes.”

The rule most notably would prohibit review of decisions prior to issuance by PTAB management judges, the USPTO Director and other high-level USPTO officers. As part of the NPRM, the USPTO issued proposed changes to its Standard Operating Procedure (SOP4), adding a part 43.

The Office issued the request for comment (RFC) on this topic last year, around the same time the U.S. Government Accountability Office (GAO) released its report finding that “the majority of [administrative patent] judges (75 percent) surveyed by GAO responded that the oversight practiced by U.S. Patent and Trademark Office (USPTO) directors and PTAB management has affected their independence, with nearly a quarter citing a large effect on independence.” The final report was issued in December 2022 and concluded that increased transparency is needed in the USPTO’s oversight of judicial decision-making.

Under an interim process implemented in May 2022, some PTAB decisions were required to be circulated to a pool of non-management administrative patent judges (APJs) known as the Circulation Judge Pool (CJP) prior to issuance. Decisions required to go before the CJP included America Invents Act (AIA) institution decisions; AIA final written decisions; AIA decisions on rehearing; inter partes reexamination appeal decisions; designated categories of ex parte appeal, ex parte reexamination appeal, and reissue appeal decisions; and all Board decisions (including AIA and ex parte appeal decisions) following a remand from the Federal Circuit. Now, circulation to the CJP is optional for all decisions. The USPTO also updated former PTAB Standard Operating Procedure 9 for decisions remanded from the Federal Circuit, eliminating the requirement for PTAB judges to discuss remanded cases with PTAB management. That SOP has been renamed to SOP3.

According to the NPRM, representative comments received stressed the need for judicial independence, reduced influence by USPTO senior management on PTAB panels, more detail on the CJP, and some suggested abandoning the CJP procedure altogether “in favor of entrusting the APJs and the Director Review process with maintaining consistency and quality of PTAB decisions.”

Proposed Section 43.3(d) of the SOP4 would delegate the Director’s power to designate and re-designate PTAB panels to the Chief Administrative Patent Judge and would also “prohibit the Director from directing or otherwise influencing the paneling or repaneling of any proceeding prior to issuance of the panel decision.” The Director could, however, issue general paneling guidance for proceedings and direct repaneling according to such guidance when reviewing or rehearing issued decisions.

Management judges would also be barred from initiating communication with panel judges prior to issuance of a decision. The decision to request input from management judges would be optional and “solely within the discretion of an individual panel member.”

The deadline to submit comments is December 5, 2023. The SOP4 may be further revised after consideration of comments received on the NPRM.

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Author: aquarius1983men
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6 comments so far.

  • [Avatar for Astute observer]
    Astute observer
    October 12, 2023 01:24 pm

    Yeah right. James Smith, David Ruschke, and Scott Boalick have been so much purer and non-political and “just the law, no spin” compared to any recent Director.

  • [Avatar for Anon]
    October 8, 2023 08:55 am

    Julie and Alan are absolutely correct.

    As far as they point out the result of the Court’s recent rewriting of law.

    I would but reiterate a problem with what the Court did in their desire to NOT ADDRESS the actual core issue as the Arthrex case brought to them, in that the Court acted in an ultra vires manner in actually redrafting the explicit words of the governing legislatively written law.

    The actions of this Executive Branch proposed rule may well be fully proper under the authority that the administrative agency has to set its own internal standards of operations, but the mere fact that this would wreck what the Court has (re)written only more emphasizes that our Courts should not be — and in patent law matters, ARE NOT authorized to be — writing laws.

    Most all attorneys learn early (1L) of the nature of Common Law law writing that exists. I would posit that a majority further learn the spectrum of “Common Law” law writing that exists between ‘gap filling” (actual missing elements of legislative law) and interpreting of existing, present, but perhaps ambiguous elements of legislative law.

    Sadly, there appears to be an absence of distinguishing this differences along that spectrum, and critically when it comes to patent law, recognizing the Constitutional delegation of authority. This is NOT to say that Congress may not delegate some of its authority across the gulf of different branches, but ALL such delegations must meet a very high level of scrutiny.

    The debacle of the appointments clause — and the gamesmanship of the Patent Office (not EVEN using a title like “temporary,” but merely “performing the duties of” to SKIRT controlling law’s time limits) makes a mockery of the Rule of Law.

  • [Avatar for mike]
    October 6, 2023 02:29 pm

    @Julie Burke and @Alan Harrison

    Exactly! This brings us right back to having a non-Senate-confirmed APJ problem.

    Looks like how this AIA system was set up and rushed can’t remove its flaws.

  • [Avatar for Julie Burke]
    Julie Burke
    October 6, 2023 01:17 pm

    What legal nuance am I overlooking here?

    Didn’t SCOTUS designate PTAB APJs as inferior officers subject to significant oversight, direction and control by the USPTO’s Senate-confirmed “principal officer,” Director Vidal

    & now the USPTO proposes to let PTAB APJs function without Director Vidal’s oversight?

  • [Avatar for Alan Harrison]
    Alan Harrison
    October 6, 2023 06:42 am

    This just recreates the Arthrex problem.

  • [Avatar for Pro Say]
    Pro Say
    October 5, 2023 05:37 pm

    Yet more lipstick on the China-helping, Big Tech loving, innovation-killing,America-damaging PTAB pig.

    A pig which Congress should have put out to pasture years ago.

    But it’s not too late, for that pasture is still there.

    Waiting with open arms.