On October 5, 2023, the Patent Office issued a notice of proposed rulemaking regarding pre-issuance internal circulation and review of Patent Trial and Appeal Board (PTAB) decisions.¹ The proposed rule prohibits management judges² from direct or indirect involvement in PTAB panel decisions³ prior to issuance. It allows for a member of the panel to request input from management judges, but the panel’s decision to adopt any feedback is entirely optional and discretionary. 

The proposed rule appears to be in response, at least in part, to a survey report issued by the Government Accountability Office (GAO) on December 2022,⁴ which found that 75% of PTAB judges felt that PTAB management oversight had affected their independence. In addition, 67% of judges reported "feeling pressure to change or modify an aspect of their decision in an AIA proceeding based on management review." Some judges also responded that "it was not always clear who in management reviewed draft decisions and whether comments were mandatory."

As part of the proposed rule, the Patent Office issued a new PTAB Standard Operating Procedure (SOP4) for PTAB decision review and updates to SOP3 for decisions remanded from the Federal Circuit. The aim of these new and updated procedures, like the proposed rule, is to increase transparency of internal Patent Office procedures and panel independence. SOP4 details the PTAB’s internal circulation and review procedures.⁵ It changes the Patent Office's procedures such that all pre-issuance circulation and review procedures are now optional. More specifically, it changes an interim procedure implemented in May 2022 requiring panels to circulate their decisions to a pool of non-management judges ("Circulation Judge Pool," or “CJP”) before issuance. CJP review is now optional, and it is up to the panel’s discretion whether to incorporate any feedback.⁶ Under SOP3, PTAB judges are no longer required to discuss remanded cases with PTAB management.⁷  

One concern with the proposed rule is the potential for increased conflicts or inconsistencies with relevant authority and Board policies and guidance. The proposed rule seeks to address this concern by limiting outside review of decisions prior to issuance. In line with the proposed rule, SOP4 provides that the CJP may have periodic meetings with management to discuss issued decisions for the purposes of (i) considering new or updated policies or guidance and (ii) flagging candidates for sua sponte Director review. SOP4 additionally provides for a PTAB Post Issuance Review team that identifies issued PTAB decisions for similar purposes. The proposed rule also permits the Director to issue general paneling guidance and to direct repaneling when reviewing or rehearing an issued decision. 

The Patent Office’s new proposed rule and procedures may provide increased judicial independence for PTAB panels. Limiting outside review of panel decisions prior to issuance while providing for additional oversight post-issuance may strike a balance between judicial independence and consistency across PTAB decisions. The deadline for public comments is December 5, 2023, after which point the Patent Office will analyze any comments and either issue a new or modified proposed rule, withdraw the rule, or issue a final rule that incorporates the comments.

 

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[1] Rules Governing Pre-Issuance Internal Circulation and Review of Decisions Within the Patent Trial and Appeal Board, 88 Fed. Reg. 69578 (proposed Oct. 6, 2023) (to be codified at 37 C.F.R. pt. 43), https://www.federalregister.gov/documents/2023/10/06/2023-22218/rules-governing-pre-issuance-internal-circulation-and-review-of-decisions-within-the-patent-trial. 

[2] "Management Judge" means "the Chief Administrative Patent Judge, the Deputy Chief Administrative Patent Judge, a Vice Chief Administrative Patent Judge, a Senior Lead Administrative Patent Judge, a Lead Administrative Patent Judge, including individuals who serve in these positions in an acting capacity, or any other Administrative Patent Judge who, as part of their duties, supervises the work of other Administrative Patent Judges or is responsible for reviewing the performance of other Administrative Patent Judges."

[3] "Decision" means "any decision, order, opinion, or other written work product intended for entry into the record of a Board proceeding."

[4] U.S. Gov't Accountability Off., GAO-23-105336, Patent Trial and Appeal Board: Increased Transparency Needed in Oversight of Judicial Decision‑Making (Dec. 2022), https://www.gao.gov/assets/gao-23-105336.pdf. 

[5] U.S. Pat. & Trademark Off., SOP4, Patent Trial and Appeal Board Standard Operating Procedure 4: Procedure for Pre‑Issuance Optional Decision Review and Post-Issuance Decision Review (Oct. 2023), https://www.uspto.gov/sites/default/files/documents/ptab_sop_4-2023-oct.pdf.

[6] The new procedure conforms with the proposed rule, which provides for similar prohibitions if the Patent Office establishes procedures governing the internal circulation and review of decisions by non-management judges (i.e., the CJP).

[7] U.S. Pat. & Trademark Off., SOP3, Patent Trial and Appeal Board Standard Operating Procedure 3: Procedure for Decisions Remanded from the Federal Circuit for Further Proceedings (Oct. 2023), https://www.uspto.gov/sites/default/files/documents/ptab_sop_3-2023-oct.pdf.

 

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