The PTAB has substantially revised its Standard Operating Procedures (“SOPs”) regarding paneling of matters before the PTAB (SOP1) and precedential and informative decisions (SOP2). The revisions focus upon increasing transparency, predictability, and reliability across the USPTO. They update the procedures based upon feedback received from stakeholders, courts, legislators, and our 6 years of experience with AIA trial proceedings.
Revised SOP1 explains the procedures for panel assignment and for informing parties regarding panel changes. It also explains the process for designating panels with more than three judges, and notes that such panels should be rare and will only occur with the approval of the Director.
Revised SOP2 creates a Precedential Opinion Panel (POP), typically comprising the Director, the Commissioner for Patents, and the Chief Judge of the PTAB. The POP will serve two primary functions: 1) it may be convened to rehear matters in pending trials and appeals, for example on issues of exceptional importance; and 2) it may assist the Director in determining whether a decision previously issued by the PTAB should be designated as precedential or informative. It is expected that the POP and the procedures described in revised SOP2 will, in most cases, replace the prior practice of expanded paneling under SOP1, with a process that is more transparent and predictable. It is also expected that revised SOP2 will result in more decisions being designated as precedential.
Revised SOP2 includes, among other things:
- Creation of the POP, typically comprising the Director, the Commissioner for Patents, and the Chief Judge of the PTAB;
- Identification of the circumstances when POP members may delegate their authority, and to whom;
- Provision of notice to the parties when POP review takes place, as well as the identification of the POP members in a particular case;
- Explanation of the standards, procedures, and timing for requesting POP review in a pending case on rehearing; and
- Revised procedures for designating a decision previously issued by the PTAB as precedential or informative.
For more details about revised SOP1 and SOP2, please see the full text available on the USPTO website.