PTO Promotes Judicial Independence in Final PTAB Rule

by | Oct 4, 2024 | PTAB News

By Lauren Kim and Matt Johnson –

On June 12, 2024, the USPTO issued a final rule governing the pre-issuance circulation and review of decisions within the PTAB. This formalized current USPTO procedures within the Standard Operating Procedure (SOP4) adopted on October 5, 2023. Now, future attempts by the Office to establish additional procedures governing pre-issuance circulation and review of decisions may not involve participation (either directly or indirectly) by a PTAB Management Judge, officer, or employee external to the Board.

This final rule prohibits certain involvement in panel decision-making. The panel also has sole discretion to adopt feedback it receives. Prior to issuance of a decision by the panel, the USPTO Director, Deputy Director, and Commissioners for Patents and Trademarks may not be involved (either directly or indirectly) in PTAB panel decision-making.

Unless a panel member has requested input (or they themselves are a member of the panel), a PTAB Management Judge, officer, or employee of the Office external to the Board may not be involved (either directly or indirectly) in PTAB panel decision-making.

The expectation is that decisions of the Board comport with all statutes, regulations, binding case law, and written Office policy and guidance applicable to Board proceedings. To improve transparency, all policy and guidance binding on panels of the Board shall be in writing and made public.

Takeaways:

The USPTO made clear that PTAB judges are to exercise their judicial independence. It also emphasized that the Director is not involved in directing (or otherwise influencing) PTAB panel decisions prior to issuance. The final rule is in effect from July 12, 2024, and exemplifies one of many initiatives by the USPTO to promote the integrity of the IP ecosystem.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.