Rules Governing Pre-Issuance Internal Circulation and Review of Decisions Within the Patent Trial and Appeal Board

<RULE> DEPARTMENT OF COMMERCE <SUBAGY>Patent and Trademark Office</SUBAGY> <CFR>37 CFR Part 43</CFR> <DEPDOC>[Docket No. PTO-P-2023-0012]</DEPDOC> <RIN>RIN 0651-AD68</RIN> <SUBJECT>Rules Governing Pre-Issuance Internal Circulation and Review of Decisions Within the Patent Trial and Appeal Board</SUBJECT> <HD SOURCE="HED">AGENCY:</HD> United States Patent and Trademark Office, Department of Commerce. <HD SOURCE="HED">ACTION:</HD> Final rule. <SUM> <HD SOURCE="HED">SUMMARY:</HD> The United States Patent and Trademark Office (“USPTO” or “Office”) is amending the rules of practice before the Patent Trial and Appeal Board (“PTAB” or “Board”) to add a new rule governing the pre-issuance circulation and review of decisions within the PTAB. The rule promotes the efficient delivery of reliable intellectual property rights by promoting consistent, clear, and open decision-making processes at the PTAB. </SUM> <EFFDATE> <HD SOURCE="HED">DATES:</HD> This rule is effective July 12, 2024. </EFFDATE> <FURINF> <HD SOURCE="HED">FOR FURTHER INFORMATION CONTACT:</HD> Melissa A. Haapala, Vice Chief Administrative Patent Judge, or Stacy B. Margolies, Acting Senior Lead Administrative Patent Judge, at 571-272-9797. </FURINF> <SUPLINF> <HD SOURCE="HED">SUPPLEMENTARY INFORMATION:</HD> <HD SOURCE="HD1">Executive Summary</HD> To promote consistent, clear, and open decision-making processes, the USPTO issued an interim process for PTAB decision circulation and internal PTAB review in May 2022. The processes were put in place to support a consistent and clear approach to substantive areas of patent law and PTAB-specific procedures, while maintaining open decision-making processes. The USPTO subsequently issued a Request for Comments (RFC) seeking public input on these processes. 87 FR 43249-52 (July 20, 2022); 87 FR 58330 (Sept. 26, 2022) (extending comment period). After reviewing feedback received from the public in response to the RFC, the USPTO made some modifications to the interim process and issued a Standard Operating Procedure 4 (SOP4) on October 5, 2023, available at <E T="03">https://www.uspto.gov/sites/default/files/documents/ptab_sop_4-2023-oct.pdf.</E> The processes set forth in SOP4 replaced the former interim process and provided further details requested by the public. Following the proposed rule and solicitation of public comments, 88 FR 69578 (Oct. 6, 2023), this final rule revises the rules of practice to implement, in regulation, key aspects of the processes used for circulation and review of decisions within the PTAB. This final rule provides that the USPTO Director, Deputy Director, and Commissioners for Patents and Trademarks are not involved, directly or indirectly, in the decision-making of panels of the PTAB prior to issuance of a decision by the panel. In addition, no PTAB Management Judge nor any officer or employee of the Office external to the Board is involved, directly or indirectly, in panel decision-making unless a panel member has requested their input or they are a member of the panel. The adoption of any feedback received by the panel is entirely optional and solely within the discretion of the panel. This final rule also requires that if the Office establishes additional procedures governing the internal circulation and review of decisions prior to issuance, no Management Judge or officer or employee external to the Board shall participate, either directly or indirectly, in any such review. The adoption of any feedback received pursuant to such review is entirely optional and solely within the discretion of the panel. Finally, this final rule provides that decisions of the Board are expected to comport with all statutes, regulations, binding case law, and written Office policy and guidance applicable to Board proceedings. The rule further provides that all policy and guidance binding on panels of the Board shall be in writing and made public. <HD SOURCE="HD1">Background</HD> On September 16, 2011, the America Invents Act (AIA) was enacted into law (Pub. L. 112-29, 125 Stat. 284 (2011)). The AIA established the PTAB, which is made up of administrative patent judges (APJs) and four statutory members, namely the USPTO Director, the USPTO Deputy Director, the USPTO Commissioner for Patents, and the USPTO Commissioner for Trademarks. 35 U.S.C. 6(a). In panels of at least three members, the PTAB hears and decides ex parte appeals of adverse decisions by examiners in applications for patents; appeals of adverse decisions by examiners in reexamination proceedings; and proceedings under the AIA, including <E T="03">inter partes</E> reviews, post-grant reviews, and derivation proceedings. 35 U.S.C. 6(b), (c). Under the statute, the Director designates the members of each panel. 35 U.S.C. 6(c). The Director has delegated that authority to the Chief Judge of the PTAB. See PTAB Standard Operating Procedure 1 (Revision 15) (SOP1), Assignment of Judges to Panels, available at <E T="03">https://www.uspto.gov/sites/default/files/documents/SOP%201%20R15%20FINAL.pdf.</E> <HD SOURCE="HD2">Interim Process, SOP4, and CJP</HD> The Office recognizes that it is important that the PTAB maintain a consistent and clear approach to substantive areas of patent law and PTAB-specific procedures, while maintaining open decision-making processes. Starting in May 2022, the USPTO used an interim process for PTAB decision circulation and internal PTAB review. See “Interim process for PTAB decision circulation and internal PTAB review,” available at <E T="03">https://www.uspto.gov/interim-process-ptab-decision-circulation-and-internal-ptab-review.</E> That interim process was replaced by SOP4, which issued October 5, 2023. The processes set forth in SOP4 are substantially similar to the interim process, except for the change described below to the Circulation Judge Pool (CJP) review. SOP4 further sets forth additional details requested by stakeholders. Under the prior interim process, certain categories of PTAB decisions were required to be circulated to the CJP, a pool of non-management APJs, prior to issuance. To provide for judicial independence and in response to stakeholder feedback, under the process set forth in SOP4, circulation to the CJP is now optional. The CJP is made up of a representative group of non-management APJs who collectively have technical/scientific backgrounds and legal experience that reflects the PTAB judges as a whole. The CJP is modeled after both the Federal Circuit's previous circulation to the Senior Technical Assistant and the Federal Circuit's 10-day circulation process for precedential decisions. See United States Court of Appeals for the Federal Circuit, Internal Operating Procedures, Redlined Copy, 18 (Mar. 1, 2022), available at <E T="03">https://cafc.uscourts.gov/wp-content/uploads/RulesProceduresAndForms/InternalOperatingProcedures/IOPs-Redline-03012022.pdf</E> (describing the previous circulation to the Senior Technical Assistant); United States Court of Appeals for the Federal Circuit, Internal Operating Procedures, 10 section 5 (July 22, 2022), available at <E T="03">https://cafc.uscourts.gov/wp-content/uploads/RulesProceduresAndForms/InternalOperatingProcedures/InternalOperatingProcedures.pdf</E> (describing the 10-day circulation process for precedential decisions). The CJP's role is to provide the panel with information regarding potential conflicts or inconsistencies with relevant authority, including PTAB precedential decisions, director guidance memoranda, and other written Office and Board policies and guidance. The CJP also provides the panel with information regarding potential inconsistencies with informative or routine PTAB decisions and suggestions for improved readability and stylistic consistency. The panel has the final authority and responsibility for the content of a decision and determines when and how to incorporate feedback from the CJP. The APJs on the panel are required to apply pertinent statutes, rules, binding case law, and written policy and guidance issued by the Director or the Director's delegate that is applicable to PTAB proceedings. All policies and guidance applicable to PTAB proceedings that the APJs are required to apply are written. The CJP may have periodic meetings with PTAB Executive Management ( <E T="03">i.e.,</E> PTAB Chief Judge, Deputy Chief Judge, Vice Chief Judges, Senior Lead Judges, and those acting in any of the foregoing positions) to discuss issued panel decisions and general areas for potential policy clarification. PTAB Executive Management may discuss these issued decisions or areas for potential policy clarification with the Director for the purposes of (i) considering whether to issue new or updated policies or guidance, for example, through regulation, precedential or informative decisions, and/or a Director guidance memorandum; and (ii) considering sua sponte ( <E T="03">i.e.,</E> on the Director's own initiative) Director Review of a decision. With respect to PTAB management ( <E T="03">i.e.,</E> PTAB Executive Management and Lead Judges), under the interim process, any panel member, at their sole discretion, could consult with one or more management team members regarding a decision prior to issuance. SOP4 builds on that process and sets forth details on how a panel member may optionally consult with a designated PTAB Management Pre-Issuance Optional Review team in addition to the CJP described above. The team is designated by PTAB Executive Management and may include a Vice Chief Judge, a Senior Lead Judge, Lead Judges, and those acting in any of the foregoing positions. If consulted, the PTAB Management Pre-Issuance Optional Review Team can provide information regarding the consistent application of USPTO and Board policy, applicable statutes and regulations, and binding case law. Adoption of any suggestions provided ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━ Preview showing 10k of 52k characters. Full document text is stored and available for version comparison. ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━