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

Following 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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