The US Patent and Trademark Office (USPTO) has made changes to its Patent Trial and Appeal Board (PTAB) Standard Operating Procedure (SOP 1) regarding the assignment of judges to panels. The latest revision, the 16th one, has removed the option for expanded panels, along with other modifications.
The previous version of SOP 1 allowed for the suggestion of an expanded panel of more than three judges by PTAB members, the Patent Business Unit, applicants, or a patent owner or petitioner. However, this option was not favored and was not commonly used. The recent revision, Revision 16, has completely eliminated this language.
The controversy surrounding the process for panel expansion led to this change. In the past, the USPTO admitted that the selection of judges for expanded panels was done to ensure the desired ruling by the Director. To address these concerns, the Office announced new guidance in September 2023 for empaneling procedures for the PTAB and Trademark Trial and Appeal Board (TTAB). The guidance stated that judges should avoid empaneling cases involving companies in which they hold stocks or bonds, regardless of the dollar value.
This guidance has now been included in the revised SOP 4. Additionally, the USPTO implemented an interim rule in response to the U.S. Supreme Court’s decision in Arthrex v. Smith & Nephew, which led to changes in the Director Review process and PTAB decision circulation/internal review.
Director Kathi Vidal emphasized that these updates to the procedures for assigning judges to PTAB panels aim to improve transparency in the operations of the USPTO. The changes reflect the Office’s commitment to ensuring fairness and impartiality in the handling of cases.
Overall, these revisions to the SOP demonstrate the USPTO’s ongoing efforts to streamline procedures, address concerns about panel selection, and uphold the integrity of the patent system. By removing the option for expanded panels and incorporating new guidelines for empaneling procedures, the Office is working towards creating a more efficient and equitable process for resolving patent disputes.