New SOPs Demystify Internal Practices & Consolidate PTAB Policy Control to Director

The PTAB has substantially revised its Standard Operating Procedures (“SOPs”) regarding paneling of matters before the PTAB (SOP1) and precedential and informative decisions (SOP2).

SOP1 largely explains existing internal processes relating to assignment/reassignment of judges in the interests of increasing transparency, predictability, and reliability across the USPTO. More specifically, 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.(here)

Revised SOP2 is likely to draw the most interests as it creates a Precedential Opinion Panel (POP) that effectively moves the previous PTAB precedent setting power away from the judges to the domain of the agency executives.

While the Director, of course, always had the power to drive PTAB policy, the change in precedent setting procedure does diminish the voice of the judges in this regard. That said, the change is not necessarily a bad thing for the public. First, as I have pointed out previously, arriving at a majority vote of 250+ judges to secure precedent is simply too unwieldy given the increased demand of AIA trials. Second, emphasizing the proper hierarchy and control from an Administrative Procedure Act (APA) perspective is helpful given the recent recent challenge to the PTAB under the Appointments Clause of the Constitution. As can be appreciated from SOP2, a political appointee is clearly running the show.

The POP itself will include the Director, the Commissioner for Patents, and the Chief Judge of the PTAB. The POP is explained as serving 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. Indeed, I would expect new precedent designed to help Patent Owners given the Director’s expressed interest in this regard.

Revised SOP2 includes, among other things:

-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.

Expanded panel practices, while not outlawed altogether are essentially gone. If the PTAB finds itself with conflicting PTAB panel decisions on a given issue, the Director can simply step in an set agency policy as is done with other agencies.