By Andrew Williams --
On August 25, 2015, the United States Patent and Trademark Office published a "Request for Comments on a Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews" in the Federal Register (80 Fed. Reg. 51540). This is the second request for comments related to the Patent Trail and Appeal Board ("PTAB") in as many weeks (see "PTAB Finally Proposes Rule Amendments: The More Things Change . . ."). In fact, the original blog post by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee announcing last week's rule package was updated to announce the publication of this pilot program. Under the proposal, a single Administrate Patent Judge ("APJ") would decide whether to institute an IPR trial, rather than the normal three APJs that are currently used. If trial is instituted, then two additional APJs would be assigned to the case. The specific questions for which the Office is seeking input are:
1. Should the USPTO conduct the single-APJ institution pilot program as proposed herein to explore changes to the current panel assignment practice in determining whether to institute review in a post grant proceeding?
2. What are the advantages or disadvantages of the proposed single-APJ institution pilot program?
3. How should the USPTO handle a request for rehearing of a decision on whether to institute trial made by a single APJ?
4. What information should the USPTO include in reporting the outcome of the proposed single-APJ institution pilot program?
5. Are there any other suggestions for conservation and more efficient use of the judicial resources at the PTAB?
As suggested by the last question, the justification provided in the Notice for this pilot program is improving the efficiency in the PTAB's handling of post-grant proceedings. The Office noted that since the first petition was filed in September 16, 2012, the Board has issued over 2,200 decisions on institution and over 450 final written decisions. In that time, the Board impressively has not missed a statutory or regulatory deadline. They have even managed to reduce the backlog of ex parte appeals. Nevertheless, the Board is looking for ways to conserve judicial resources, and requiring only one APJ to make a decision on institution is one possible way to do so. However, if the number of requests for rehearing increases significantly, any savings may be lost.
Of course, conserving judicial resources is not the only potential advantage of such a program. As Director Lee noted in a previous blog post (see "USPTO Director Announces "Quick-Fix" and Anticipated Changes to PTAB Practice"), there is a perception that the IPR process is biased against patent owners. Feeding that speculation fire is the concern that a three-APJ panel would have a vested interest in finding the claims of a patent ultimately unpatentable if they were initially involved in the decision to institute trial. The theory goes that if only one APJ is involved in the decision to institute, the two "independent" APJs would be less biased by that institution decision. This is only true, however, if they two new APJs do not defer to the APJ more familiar with the case, especially if that APJ is still part of the tribunal that makes the final decision. Utilizing a completely new three-APJ panel could eliminate this concern regarding influence, but it would limit any conservation of judicial resources because three entirely new APJs would need to get up-to-speed on the case. Therefore, it is not surprising that such a provision was not included the pilot program.
Additional specifics regarding the pilot program include:
• The USPTO would select petitions for inclusion in the pilot program from all petitions filed during a specific period.
• The specific period would be between three and six months.
• Petitioners and patent owners would not be able to request participation in, or exclusion from, the pilot program.
• The pilot program would be limited to IPRs.
• If a selected petition is later deemed unsuitable for the pilot program, it would be removed.
• If the single APJ decides to institute, two additional APJs would be added for rendering interlocutory decisions and for issuing a final written decision on the merits.
• The single judge, however, would generally manage the proceedings during trial due to being most familiar with the case.
To be considered, any comments must be received on or before October 26, 2015. They must be sent by electronic mail to the address: PTABTrialPilot@uspto.gov, and will be posted on the USPTO website. We will monitor submissions and report on the status as warranted.