Last week, the Patent & Trademark Office revised its Standard Operating Procedures 1 and 2, which address, among other things, the processes for assigning PTAB judges to panels, for designating PTAB decisions precedential, and for seeking rehearing of issues in pending cases. Of the changes, two may have major effects on PTAB practice.
The first states that the Director retains sole discretion to designate an opinion precedential, but establishes an Executive Judges Committee to advise the Director in performing this role. Only about 10 AIA trial decisions have been designated precedential over the past six years, and this is largely because a majority of the PTAB’s voting judges had to approve the designation. With over 270 judges, this was a rare occurrence. Under the new streamlined procedure, the Executive Judges Committee (consisting of the PTAB Chief Judge, Deputy Chief Judge, and Operational Vice Chief Judges, in order of seniority and based on availability) will evaluate and vote on whether to recommend designating a decision precedential. SOP2 Rev. 10 at 10. The committee will then issue its recommendation to the Director. If the Director decides to designate the decision precedential, the decision will then be published with a precedential label and the date it received the designation. Id. at 11. The PTO’s announcement of this revised process states that it expects “that revised SOP2 will result in more decisions being designated as precedential.”
The second significant change is that a newly formed Precedential Opinion Panel may now rehear issues in pending PTAB trials. By default, this panel comprises the PTO Director, the Commissioner for Patents, and the PTAB Chief Judge, and its review may be triggered in several ways. The Director may order rehearing sua sponte, any member of the Board may recommend review, and any party to a proceeding may request review. SOP2 Rev. 10 at 5-6. If a party requests review, it must identify with particularity the reasons for recommending review, and its counsel must also certify to at least one of the following:
Based on my professional judgment, I believe the Board panel decision is contrary to the following decision(s) of the Supreme Court of the United States, the United States Court of Appeals for the Federal Circuit, or the precedent(s) of the Board: (cite specific decisions).
Based on my professional judgment, I believe the Board panel decision is contrary to the following constitutional provision, statute, or regulation: (cite specific provision, statute, or regulation).
Based on my professional judgment, I believe this case requires an answer to one or more precedent-setting questions of exceptional importance (set forth each question in a separate sentence).
A Screening Committee will then review the party’s request and issue its own recommendation to the Director about whether to have the Precedential Opinion Panel review the decision. The Director will decide how to proceed on the recommendation, and if he or she orders review, the Precedential Opinion Panel will enter an order notifying the parties and the public of the review. The Precedential Opinion Panel will then have jurisdiction over all issues in the case until it concludes its review, although it may delegate its authority back to the prior Board panel to handle routine matters. Id. at 7. The PTO’s announcement of this change states that this rehearing process “will, in most cases, replace the prior practice of expanded paneling under SOP1, with a process that is more transparent and predictable.”
Time will tell how significant these changes are in practice, but the tenor and nature of the revised procedures suggests that the PTO Director will be more involved in deciding important issues that cut across PTAB trials and the PTO as a whole. Indeed, the Director may designate any decision by any panel, including the Precedential Opinion Panel, as precedential without regard to any other precedential procedures set forth in Standard Operating Procedure 2.