From the USPTO: PTAB Standard Operating Procedures

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.

21 thoughts on “From the USPTO: PTAB Standard Operating Procedures

  1. 3

    And there are those days where the troubled profession of patent law seems like a tiny tiny hill of beans:

    The group began to talk about whether the federal judiciary would ever face similar scrutiny, and, according to a source, Chua said she did not believe it would. She told the students she had known about allegedly abusive and harassing behavior by another judge, Alex Kozinski, who was head of the ninth circuit and was forced to retire from the bench last year after more than a dozen women accused him of harassment.

    The conversation then turned to Kozinski’s protege and good friend Kavanaugh, who one source said was a familiar name even though he had not yet been nominated to the high court. Chua allegedly told the students that it was “no accident” that Kavanaugh’s female clerks “looked like models”. Student reacted with surprise, and quickly pointed out that Chua’s own daughter was due to clerk for Kavanaugh.

    Now wrap your brain around the fact that the “unbiased” Scalia-fell@ting sewer dwellers over at SCOTUSblog surely knew about Kavanaugh and his “quirks” but go on pretending that a white male Ferderalist Society Georgetown g@rbage dump like Brett K could somehow not be a mis0gynist t 0 0l.

    But, hey, gotta keep those c 0 cktail parties fun. And it wouldn’t be fun if Re pu k k kes were treated like Rep u k k kes instead of those white white daddies that “real Merka” craves.

      1. 3.1.1

        Remember your “broken scoreboard”? The Supreme Court?

        A little reminder for you: it’s actually 9 people who wear matching robes. Although that number might grow in a few years.

        The point is that if you screech endlessly about the Supreme Court being “broken” than you really can’t pretend, somehow, that discussions about the people who are trying to get on the Court (and change it, for better or worse) are “questionable.” Which is to say that you’re a hypocrite.

        The sad truth (for you) is that the more people (e.g., women) who see what the Rep u k ke party is about (and has been about for a long time), the less popular this dying desperate party becomes. And so they become more desperate.

        Brett Kavanaugh is piece of sh*t person. I’ve no doubt he has “colleagues” who find him charming (or were willing to say so at one point in time). But he’s a g@rbage excuse for a human being. Find a better person for the Supreme Court. It’s not difficult. Just don’t drop your line into the Ferderlist Society ce ss p00l.

        1. 3.1.1.1

          Yet again – for the umpteenth time – this is (supposedly) a PATENT LAW blog.

          My “scoreboard is broken” comments are directly on point to the context of patent law — the point of the blog.

          The question is to why your OFF point rants are allowed to continue to blight this forum.

          1. 3.1.1.1.1

            The Supreme Court is the ultimate authority on patent law.

            We all know this. I’m really sorry, snowflake. This is a difficult time for “men” like you. And it’s only going to get worse. Call one of your old frat buddies and have a good cry together. You can burn each other’s socks and bond over that.

            1. 3.1.1.1.1.1

              ?

              What the H does your initial post or your ad hominem laden reply have to do with my wanting you to stay on topic?

              Do you not realize how Trump of you are this is that you can not control your feelings and find an appropriate forum for your rants?

              1. 3.1.1.1.1.1.1

                how Trump of you

                You’re a truly ment@lly ill little puppy, “anon”.

          2. 3.1.1.1.2

            My “scoreboard is broken” comments are directly on point to the context of patent law

            Your “scoreboard is broken” comments are evidence of your inability to come to terms with basic facts. You’d rather just make up your own, in the same manner that you made up 500 different pseudonyms a week here while trying to derail any and every discussion of …. a Supreme Court case whose outcome was guaranteed to cause you grief.

            Go ahead and pretend that you don’t remember this. I’ve got the files saved on my computer.

            1. 3.1.1.1.2.1

              Your “scoreboard is broken” comments are evidence of your inability to come to terms with basic facts.

              Nothing of the sort.

              My “scoreboard is broken” comments are evidence that I am applying critical thinking to how the Justices are mashing the nose of wax of 35 USC 101.

              As to your attempted retread of pseudonym use, did you add to that file all of YOUR rampant pseudonym use – after you whined like a beotch like forever?

              Or did you note that your attempted characterization (attempt to derail) is simply – and utterly – incorrect?

              Yeah, that’s what I thought.

        2. 3.1.1.2

          Dennis — I ask again:

          Isn’t PatentlyO better than this?

  2. 2

    Any thoughts on whether the POP addresses the problem of APJs potentially being considered principle officers under the Constitution? On first blush, it seems that the Director’s new rehearing power puts the PTAB more squarely in line with Lucia v. SEC’s inferior officer category.

  3. 1

    Bravo!

    Thank you Mr. Iancu and staff!

    Now please require that the entire PTO follow Alice as SCOTUS actually intended it … including ONE AND ONLY ONE alleged abstract idea / concept applied to ALL the claims at issue.

    1. 1.1

      follow Alice as SCOTUS actually intended it … including ONE AND ONLY ONE alleged abstract idea / concept applied to ALL the claims at issue.

      The Supremes didn’t put any such limit on the eligibility analysis. Why not? Because such a limit would be arbitrary and silly.

      There’s no reason that an ineligible claim can’t comprise two “combined” ineligible abstractions. And there’s no reason that such a claim can’t be analyzed under Alice while recognizing that the two (or more) combined abstractions can not make a non-abstract (and eligible) claim.

      1. 1.1.1

        Wrong:

        “We hold that the claims at issue are drawn to the abstract idea of intermediated settlement …” Alice at 2352 (one idea)

        “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice at 2355 (one concept)

        “We must first determine whether the claims at issue are directed to a patent-ineligible concept.” Alice at 2355 (one concept)

        “The claims at issue in Bilski described a method for hedging against the financial risk of price fluctuations.” Alice at 2355 (one method)

        “It follows from our prior cases, and Bilski in particular, that the claims at issue here are directed to an abstract idea.” Alice at 2356 (one idea)

        “Because the claims at issue are directed to the abstract idea of intermediated settlement …”Alice at 2357 (one idea)

        There’s no confusion here. No subjectivity. No uncertainty. No gray area. No interpretation.

        The Supreme Court said what it means and means what it says:

        One abstract idea. All the claims at issue.

        One can’t be identified? Then the claims are § 101 eligible.

        The Alice / Mayo analysis stops there.

        Step two is moot.

        1. 1.1.1.1

          News flash: Alice wasn’t limited to its facts. Just because there was (allegedly) one abstraction identified in Alice doesn’t mean that a claim with two abstractions somehow squeaks through the eligibility gate. That’s absurd. And you’re absurd for pretending otherwise.

          My goodness.

          1. A method, comprising thinking that a measured fingernail length correlates with a diminished likelihood of foot cancer, further comprising a step of calculating the risk of investing in water polo robot stocks.

          That’s an eligible claim? Because two abstractions?

          Please. Call your malpractice insurance carrier and tell them to drop you.

          1. 1.1.1.1.1

            Still wrong.

            Unclench and open your eyes … put down your horse whip … step down out of your buggy … and see and understand Alice for what it is … and what it is not.

            One idea. All the claims.

            Simple.

            1. 1.1.1.1.1.1

              see and understand Alice for what it is … and what it is not.

              One idea. All the claims.

              You can repeat this vapid silliness until the cows come home. You only make you and your fellow maximalists look less credible than you already are. Which I guess is an impressive feat.

        2. 1.1.1.2

          “There’s no confusion here. No subjectivity. No uncertainty. No gray area. No interpretation.” Yes, and No. I think that you are confused, but I’m not sure why. Discussing the properties of the “claims at issue” doesn’t inherently specify the boundaries of Alice’s applicability.

          Why exactly do you believe that “directed to one of those patent-ineligible concepts” necessarily means “directed to one [and only one] of those patent-ineligible concepts”?

          Why exactly does “the claims at issue” mean that there can be only one “issue” per patent or per case? Describing a commonality of “the claims at issue” doesn’t exclude the possibility of other claims in a patent or case with potentially different issues. If each claim can have its own issue, then ALL the claims at issue is meaningless.

          1. 1.1.1.2.1

            No confusion here.

            One necessarily means one because … that’s what SCOTUS has repeatedly said:

            One.

            If more than one was permissible, the justices are certainly smart and aware enough to have said that more than one was O.K.

            But. They. Didn’t.

            As for the claims at issue … that of course refers to any and all claims alleged by the PTO (including the PTAB), District Courts, by infringers, etc. to be 101 non-compliant.

            If five out of a patent’s total of 30 claims are 101 challenged, than the Alice / Mayo test is to be applied to those five claims.

            If all 30 claims are challenged, than the test is to be applied to those 30 claims.

            Simple.

            Were any of this otherwise, SCOTUS’ concern would be realized (and indeed has been sadly and unconstitutionally realized in numerous mis-applications of Alice / Mayo by the PTO and the courts):

            “At the same time, we tread carefully in construing this exclusionary lest it swallow all of patent law.” Mayo, 566 U.S. at __, 132 S.Ct, at 1293-1294 (as quoted in Alice at 2354).

            Consider this:

            If not one alleged concept applicable to all the claims at issue, would a separate concept per claim be O.K.?

            Two per claim?

            Three?

            More?

            Any limit?

            How about one per limitation?

            Two?

            Three?

            More?

            Any limit?

            All of patent law would be — and indeed is being — swallowed.

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