The United States Patent and Trademark Office (USPTO) has published a request for comments on a proposed pilot program pertaining to the institution and conduct of post grant administrative trials. The America Invents Act (AIA), which was signed into law on September 16, 2011, provides for the following post grant administrative trials: Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method Review (CBM). These new administrative procedures became available on September 16, 2012, one year after the signing of the AIA.
The USPTO currently has a panel of three Administrative Patent Judges (APJs) determine whether to institute a trial, and then normally has the same panel conduct the trial, if a decision is made to institute a trial. The USPTO is now considering a pilot program where the determination of whether to institute an IPR would be made by a single APJ. If the decision is to institute a proceeding, two additional APJs would be assigned to the IPR, joining the APJ who decided to institute the trial.
Presently, an IPR is not instituted unless there is a determination that the petition demonstrates that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable. A PGR or CBM is not instituted unless: (1) there is a determination that the petition, if unrebutted, demonstrates that it is more likely than not that at least one of the claims challenged in the petition is unpatentable; or (2) the petition raises a novel or unsettled legal question that is important to other patents or patent applications. This pilot program, if undertaken, would not disturb these thresholds for initiating. The pilot would only change standard USPTO practice to allow a single APJ to make a decision whether to institute.
To help determine the design and implementation of the pilot program, the USPTO has identified five questions for which they are seeking public input. The questions are:
- Should the USPTO conduct the single-APJ institution pilot program to institute review in a post grant proceeding?
- What are the advantages or disadvantages of the proposed single- APJ institution pilot program?
- How should the USPTO handle a request for rehearing of a decision on whether to institute trial made by a single APJ?
- What information should the USPTO include in reporting the outcome of the proposed single-APJ institution pilot program?
- Are there any other suggestions for conservation and more efficient use of the judicial resources at the PTAB?
One potential area of concern will likely be the non-appealable nature of a decision to institute. Given that Congress has insulated the agency from judicial review of such decisions, there will certainly be some who question the wisdom and propriety of having a single individual reach a non-appealable decision not to institute. See USPTO proposes a pilot where a single APJ would make IPR institution decisions.
To be considered, comments must be received on or before October 26, 2015. Comments must be sent by electronic mail message over the Internet addressed to: PTABTrialPilot@uspto.gov. Electronic comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format. The USPTO also reminds those who may be interested in commenting that any and all comments will be available for viewing via the USPTO’s Web site. Therefore, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments.
Tags: Board, Inter Partes Review, IPR, patent, Patent Office, patent trial and appeal board, patents, PTAB, USPTO
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