RULEMAKING: PTO Aims for Transparency, Judicial Independence at PTAB

by | Nov 17, 2023 | Final Written Decisions, PTAB News, PTAB Trial Basics, Trial Institution

By Christian Roberts and Matthew Johnson –

On October 6, 2023, the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) making changes to the Patent Trial and Appeal Board’s (“PTAB”) internal circulation and review of decisions.  The purpose of the proposed rule is to “promote consistent, clear, and open decision-making processes while protecting judicial independence and increasing transparency of USPTO processes.”

The NPR outlines three major components of the proposed rules.

  • First, the USPTO Director, Deputy Director, and Commissioners for Patents and Trademarks are not involved—directly or indirectly—in the decisionmaking of PTAB panels prior to issuance of a decision by the panel.
  • Second, if the USPTO establishes procedures governing the internal circulation and review of decisions prior to issuance to one or more designated members of the PTAB, no management judge shall participate in any such review, either directly or indirectly.
  • Third, PTAB decisions are expected to comport with applicable statutes, regulations, binding case law, and written agency or PTAB policy or guidance, and there is no unwritten agency or PTAB policy or guidance that is binding on any PTAB panel.

Since May of 2022, the USPTO had used an interim process for PTAB decision circulation and internal PTAB review.  That interim process was replaced by a new part 43 of the Standard Operating Procedure 4 (“SOP4”), which issued concurrently with the NPR.  Additionally, a new Standard Operating Procedure 9 (renamed to “SOP3”) was issued addressing PTAB’s handling of Federal Circuit remanded case decisions.

Under the new SOP4, it is optional for PTAB judges to circulate pre-issuance decisions to a pool of non-management administrative patent judges (“APJs”) known as the Circulation Judge Pool (“CJP”).  Under the former interim process, the PTAB was required to circulate 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.  Circulation to the CJP is now optional for these decisions.

Additionally, the proposed rules delegate the Director’s power to designate and re-designate PTAB panels to the Chief Administrative Patent Judge.  The proposed rules would also “prohibit the Director from directing or otherwise influencing the paneling or repaneling of any proceeding prior to issuance of the panel decision.”  That said, the Director could still issue general paneling guidance and direct repaneling according to said guidance when reviewing or rehearing issued decisions.

Further, the proposed rules prohibit PTAB management from reviewing decisions prior to issuance by the panel (absent a request by a panel member, at the panel member’s sole discretion).

Finally, the PTAB is no longer required to discuss with PTAB management decisions for remanded cases from the Federal Circuit.  Under the Office’s former Standard Operating Procedure 9 (“SOP9”), PTAB judges were required to discuss decisions for such cases with PTAB management.  The new SOP9 (renamed to “SOP3” to eliminate an SOP numbering scheme gap) removes that requirement.

The deadline to submit comments for the NPR is December 5, 2023.

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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.