IP Law Daily, PATENT NEWS: USPTO issues final rule for internal review of PTAB decisions, (Jun 12, 2024)

By Cheryl Beise, J.D.

The rule formalizes current procedures within Standard Operating Procedure (SOP4) adopted last October.

The USPTO has issued a final rule amending the rules of practice before the Patent Trial and Appeal Board (PTAB) to formalize pre-issuance internal circulation and review of decisions. The rule adopts current USPTO procedures within Standard Operating Procedure (SOP4), which provides that PTAB judges are to exercise their judicial independence and that the USPTO Director is not involved in directing or otherwise influencing PTAB panel decisions prior to issuance. The final rule takes effect on July 12, 2024 (89 Fed. Reg. 49808 (June 12, 2024)).

“To promote the integrity of the IP ecosystem, we must have clear, consistent, and open decision-making by independent judges,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal. “This rule package is one of our many initiatives to protect the IP and innovation ecosystem both procedurally and substantively, in the U.S. and across borders.”

In October 2023, the USPTO published a Notice of Proposed Rulemaking (NPRM) seeking public input on rules governing pre-issuance internal circulation and review of decisions within the PTAB (88 Fed. Reg. 69578 (October 6, 2023)). The NPRM itself was proposed after receiving stakeholder feedback in response to an earlier Request for Comments published in 2022. Along with the NPRM, the Office concurrently issued Standard Operating Procedure (SOP4) to replace the prior interim Director review process for PTAB decision circulation and internal PTAB review. Based on nine comments received in response to the NPRM, the Office decided to issue this final rule to formalize current USPTO procedures within SOP4. The comments may be viewed here on the Federal eRulemaking Portal.

The final rule provides that the USPTO Director, Deputy Director, and Commissioners for Patents and Trademarks are not involved, directly or indirectly, in the decision making of panels of the PTAB prior to issuance of a decision by the panel. In addition, no employee of the Office external to the Board, nor any member of PTAB management, is involved, directly or indirectly, in panel decision-making unless a panel member has requested their input. The adoption of any feedback received by the panel is entirely optional and solely within the discretion of the panel.

The rule also sets forth that, if the Office establishes procedures governing the internal circulation and review of decisions prior to issuance to one or more designated members of the Board, no management judge shall participate in any such review, either directly or indirectly.

Finally, the rule provides that decisions of the Board are expected to comport with all statutes, regulations, binding case law, and written Office policy and guidance applicable to Board proceedings. The rule further provides that all policy and guidance binding on panels of the Board shall be in writing and made public.

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