The US Patent and Trademark Office (USPTO) recently announced a substantial revision to its Standard Operation Procedures for matters before the Patent Trial and Appeals Board (PTAB).
Standard Operating Procedure 1 describes the process by which judges are assigned to panels in all jurisdictions of the PTAB.
These jurisdictions are:
- ex parte appeals of patent applications,
- reexamination appeals,
- reissue appeals,
- interferences, and
- AIA proceedings
The new Procedure 1 eliminate the prior practice of expanding panels beyond the usual three judges without notice to the parties and the public.
It also addresses conflicts of interest, and requires administrative law judges to provide and update conflicts lists.
Standard Operating Procedure 2 addresses the designation of a Precedential Opinion Panel (POP) in adjudications before the PTAB to decide issues of exceptional importance.
The POP will usually be made up of the Director, the Commissioner for Patents, and the Chief Judge of the PTAB.
The POP’s functions are:
- • to rehear matters in pending trials and appeals
- to help the Director determine whether a previous decision should be designated as precedential or just informative.
Procedure 2 also addresses the publication of PTAB decisions and the review procedure for designating PTAB decisions, other than POP decisions, as precedential or informative authority for the PTAB.
Procedure 2 also includes a procedure for de-designating precedential decisions and informative decisions.
The changes gives the USPTO’s Director the power to create uniform policies that will be followed by both the PTAB and by patent examiners.
In the past, the PTAB has often not followed the USPTO’s interpretations of laws, rules, and regulations, leading to inconsistency and confusion.
