USPTO Issues Proposed Rules on Pre-Issuance Internal Circulation and Review of PTAB Decisions

On October 6, the United States Patent and Trademark Office issued a Notice of Proposed Rulemaking regarding pre-issuance internal circulation and review of decisions of the Patent Trial and Appeal Board. The Office also announced that it had issued a new Standard Operating Procedure 4 concerning its interim process for internal PTAB circulation and review, as well as a new SOP9 (now SOP3) concerning PTAB decisions remanded from the Federal Circuit. The Notice of Proposed Rulemaking is directed to increasing transparency at the PTAB and minimizing potential accusations of intervention by senior officers. Updated SOP4 makes internal circulation and review of certain PTAB decisions optional, while SOP3 eliminates the requirement that PTAB judges discuss cases remanded from the Federal Circuit with PTAB management.

Notice of Proposed Rulemaking

The proposed rule would codify the processes and standards that govern the internal pre-issuance circulation and review of decisions within the PTAB. It generally is intended to ensure judicial independence by limiting certain communications between USPTO and PTAB leadership and Board panels. Specifically, the proposed rule would:

• Prohibit the Director, Deputy Director, Commissioner for Patents, and Commissioner for Trademarks from communicating with any member of a panel regarding a decision prior to the issuance of that decision, except where:
  • The named individuals above are members of the panel
  • The communications relate to resource needs or the procedural status of a proceeding or are of a purely administrative or logistical nature
• Delegate the Director’s power to designate and re-designate panels under 35 U.S.C. § 6(c) to the Chief Administrative Patent Judge and prohibit the Director from influencing the paneling or repaneling of any specific proceeding
• Prohibit Management Judges or non-PTAB USPTO employees from initiating communications with any member of a panel regarding a decision, except where:
  • A member of the panel requests that one or more Management Judges provide input on a decision prior to issuance
  • The Management Judge is a member of the panel
  • The communications relate to resource needs or the procedural status of a proceeding or are of a purely administrative or logistical nature
• Prohibit Management Judges from participating in the circulation and review of decisions prior to issuance
• Specify that no unwritten or non-public agency policy or guidance shall be binding on the Board

Standard Operating Procedure 4

The Office has been using an interim process for the internal circulation and review of draft PTAB decisions and the review of PTAB decisions post-issuance since May 2022. Under the interim process, some PTAB decisions were required to be circulated to a pool of non-management administrative patent judges (the Circulation Judge Pool) prior to issuance, including America Invents Act institution decisions and final written decisions and decisions remanded to the Board from the Federal Circuit. The new SOP4 replaces the interim process and makes circulation and review by the Circulation Judge Pool optional for all decisions. The provisions proposed in the Notice of Proposed Rulemaking above would be added to SOP4 as Part 43.

Standard Operating Procedure 3 (Former Standard Operating Procedure 9)

Former SOP9 addressed the procedures by which the Board handled decisions on cases remanded from the Federal Circuit. It included a provision requiring PTAB judges to discuss such cases with PTAB management. The new SOP3, which replaces SOP9, removes that requirement. Standard Operating Procedure 9 was renamed SOP3 to eliminate a gap in the SOP numbering scheme.