Fildes & Outland, P.C.

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On September 20, 2018, the PTAB issued revised Standard Operating Procedures (SOP1 and SOP2).  The revisions seek to increase the transparency of predictability of the Board.

Revised SOP1 details the procedures for assigning judges to panels in all matters before the PTAB.  Revised SOP1 also specifies circumstances under which the composition of a panel may be changed, namely recusal of an APJ (due to a conflict), unavailability of an APJ (due to, for example, health, reassignment, or retirement), or to meet deadlines.  Once a panel has appeared in a case, panel changes are disfavored but may be granted.  Changes due to an ethical conflict will always be granted.  Revised SOP1 also details the procedures for and rare situations in which an expanded panel (more than three judges) may be used, namely to secure and maintain uniformity of the Board’s decisions, such as in a group of related cases ordinarily involving different three judge panels for each case.  Any other situations in which an expanded panel may have been previously used in the past, such as to establish binding agency authority, should now follow the Precedential Opinion Panel procedures outlined in revised SOP2.

Revised SOP2 covers the formation of a Precedential Opinion Panel (POP).  A POP will be used to establish binding agency authority concerning major policy or procedural issues, or to address other issues of exceptional importance such as constitutional questions, issues regarding statutes, rules, and regulations, issues regarding binding or precedential case law, issues of broad applicability to the Board, and conflicts between Board decisions, as well as to rehear cases.  By default, a POP will consist of the Director, the Commissioner for Patents, and the PTAB Chief Judge.  The Director may panel more than three members if deemed necessary, and the Director may replace the default members with certain other members of the Board.  Also, the default members may delegate their authority to certain other members of the Board when, for example, the default member has a conflict of interest.  The Director may convene a POP to review a Board decision and/or to order a rehearing of a case.  Alternatively, any party or any other member of the Board may recommend POP review of a Board decision.  When POP review is instituted, the POP will enter an order notifying the parties and the public of the issues it intends to resolve and the identities of the members of the POP.  The POP may order an oral hearing, and the POP must render a decision resolving the identified issues.

Revised SOP2 also outlines the procedures for the designation and de-designation of opinions as precedential or informative.  The Director has the discretion and authority to designate the decision of a POP or any other Board panel as precedential.  A POP may designate its decision as informative or routine.  All Board decisions other than POP decisions are automatically routine decisions until they are designated as precedential or informative.  Any person may nominate a decision for designation as precedential or informative, and the nominations are reviewed first by a Screening Committee and then recommended by the Screening Committee for further review by an Executive Judges Committee.  The Executive Judges Committee submits its designation decisions to the Director for final approval.  Any person may also suggest that an opinion no longer be designated as precedential or informative, and the Director may subsequently de-designate the decision.  No decision will be designated or de-designated without the Director’s approval.

A copy of the revised SOP1 may be accessed at https://www.uspto.gov/sites/default/files/documents/SOP%201%20R15%20FINAL.pdf and a copy of the revised SOP2 may be accessed at https://www.uspto.gov/sites/default/files/documents/SOP2%20R10%20FINAL.pdf.

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PTAB Issues Revised Standard Operating Procedures (SOPs)