The U.S. Patent and Trademark Office (USPTO) has announced a final rule that will update the rules of practice before the Patent Trial and Appeal Board (PTAB). This rule aims to formalize the existing Standard Operating Procedure (SOP4) that governs the circulation and internal review of PTAB decisions.
Back in October 2023, the USPTO issued a Notice of Proposed Rulemaking (NPRM) with the goal of enhancing decision-making processes, ensuring transparency, and safeguarding judicial independence within the USPTO. One key aspect of the proposed rule was to prevent PTAB management judges, the USPTO Director, and other high-level USPTO officers from reviewing decisions before their issuance.
Following a request for comments (RFC) in 2022 and a report by the U.S. Government Accountability Office (GAO) highlighting concerns about judicial independence, the final rule has now been implemented. The rule establishes an optional Circulation Judge Pool (CJP) for the review of PTAB decisions before issuance, eliminating the previous mandatory circulation process.
Additionally, the final rule introduces changes to the Standard Operating Procedure (SOP4), specifically adding Section 43.3(d) to delegate the Director’s power to designate PTAB panels to the Chief Administrative Patent Judge. This delegation aims to prevent undue influence on paneling decisions before the issuance of a decision.
The final rule, which becomes effective on July 12, 2024, received feedback from various stakeholders, with the majority expressing support for the proposed changes. While some suggested revisions to certain language in the rule, the USPTO maintained that notice-and-comment rulemaking is not required for all office policies and guidance applicable to Board proceedings. The USPTO emphasizes the need for flexibility in implementing written guidance to ensure efficiency, transparency, and consistency in PTAB proceedings.
Overall, the updated rules seek to address concerns raised about judicial independence, transparency, and decision-making processes within the USPTO. By formalizing and clarifying procedures for PTAB decisions, the USPTO aims to uphold the integrity and fairness of its patent and trademark review processes.