Published on: 10/05/2023 12:29 PM
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Patent Trial and Appeal Board |
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USPTO issues Proposed Rules on Pre-Issuance Internal Circulation and Review of PTAB Decisions, issues a new PTAB SOP for decision review, and updates SOP for decisions remanded from the Federal Circuit
The United States Patent and Trademark Office (USPTO) today issued a Notice of Proposed Rulemaking (NPRM) in the Federal Register seeking public input on rules governing pre-issuance internal circulation and review of decisions within the Patent Trial and Appeal Board (PTAB). After reviewing feedback received from the public in response to a request for comments (RFC) on the interim process for PTAB decision circulation and internal review, the USPTO is moving forward with rulemaking.
The proposed rules set forth that the Director is not involved prior to issuance in directing or otherwise influencing PTAB panel decisions. The proposed rules further provide that PTAB management is not involved in panel decision-making unless a panel member has requested the input of PTAB management and that adoption of any pre-issuance feedback is solely within the discretion of the panel.
“By formalizing the PTAB pre-issuance internal circulation and review processes, we are taking a consistent and clear approach to PTAB procedures while maintaining open decision-making processes. We appreciate the feedback we’ve received from stakeholders and continue to make our procedures more efficient and effective for America’s innovators in order to provide reliable intellectual property rights,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal.
The deadline to comment is December 5, 2023. All comments must be submitted in writing through the Federal eRulemaking Portal at www.regulations.gov.
Since May 2022, the USPTO has been using an interim process for PTAB decision circulation and internal PTAB review. That interim process has now been replaced by a new Standard Operating Procedure (SOP4), issued concurrently with this Notice of Proposed Rulemaking. The SOP4 provides a more detailed explanation of our internal circulation and review procedures. It retains many of the prior practices set forth in the interim process and provides further details requested by the public. Notably, in response to public input, the SOP4 revises the former PTAB internal circulation process so that all pre-issuance circulation and review procedures are optional and the PTAB panel has final authority for the content of a decision.
Additionally, the USPTO updated the former PTAB Standard Operating Procedure 9 for decisions remanded from the Federal Circuit to remove the requirement for PTAB judges to discuss remanded cases with PTAB management. To eliminate a gap in the SOP numbering, the USPTO has also changed the number of this SOP to be SOP3. The SOP3 replaces the former PTAB SOP 9 (rev 1).
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