[Federal Register Volume 80, Number 164 (Tuesday, August 25, 2015)]
[Notices]
[Pages 51540-51542]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-21052]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2015-0055]
Request for Comments on a Proposed Pilot Program Exploring an
Alternative Approach to Institution Decisions in Post Grant
Administrative Reviews
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
requesting comments on a proposed pilot program pertaining to the
institution and conduct of the post grant administrative trials
provided for in the Leahy-Smith America Invents Act (AIA). The AIA
provides for the following post grant administrative trials: Inter
Partes Review (IPR), Post-Grant Review (PGR), and Covered Business
Method Review (CBM). The USPTO currently has a panel of three APJs
decide whether to institute a trial, and then normally has the same
three-APJ panel conduct the trial, if instituted. The USPTO is
considering a pilot program under which the determination of whether to
institute an IPR will be made by a single APJ, with two additional APJs
being assigned to the IPR if a trial is instituted. Under this pilot
program, any IPR trial will be conducted by a panel of three APJs, two
of whom were not involved in the determination to institute the IPR.
DATES: Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before October 26, 2015.
ADDRESSES: Comments must be sent by electronic mail message over the
Internet addressed to: [email protected]. Electronic comments
submitted in plain text are preferred, but also may be submitted in
ADOBE[supreg] portable document format or MICROSOFT WORD[supreg]
format. The comments will be available for viewing via the USPTO's
Internet Web site (http://www.uspto.gov). Because comments will be made
available for public inspection, information that the submitter does
not desire to make public, such as an address or phone number, should
not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Scott R. Boalick, Vice Chief
Administrative Patent Judge, Patent Trial and Appeal Board, by
telephone at (571) 272-9797.
SUPPLEMENTARY INFORMATION:
Introduction: The first petitions for AIA post grant administrative
trials were filed on September 16, 2012. Since then, over 3,600
petitions have been filed, and over 1,500 trials have been instituted.
The USPTO has thus far been able to meet the demands placed on its
resources created by the unexpectedly heavy workload. The Patent Trial
and Appeal Board (PTAB) has issued over 2,200 decisions on institution
and over 450 final written decisions. In three-plus years, the PTAB has
not missed one statutory or regulatory deadline. At the same time, the
PTAB has reduced the backlog of ex parte appeals.
Notwithstanding the success-to-date, the USPTO is pro-actively
looking for ways to enhance its operations for the benefit of its
stakeholders and therefore is interested in exploring alternative
approaches that might improve its efficiency in handling AIA post grant
proceedings while being fair to both sides and continuing to provide
high quality decisions. Based upon comments received from the public
through public fora and formal requests, the agency is considering a
pilot program to test changing how the institution phase of a post
grant proceeding is handled.
Once trial is instituted, the AIA mandates that the resulting trial
be conducted before a three-member panel of the PTAB. Generally, under
current practice, the same panel of three administrative patent judges
(APJs) decides whether to institute and, if instituted, handles the
remainder of the proceeding, much like how federal district court
judges handle cases through motions to dismiss, summary
[[Page 51541]]
judgment, and trial. But a three-judge panel of the PTAB is not
required under the statute prior to institution, and the USPTO believes
it is prudent to explore other potentially more efficient options,
especially given that the number of petitions filed may continue to
increase.
To date and currently, the agency has intended to meet the resource
demands on the PTAB due to both AIA post grant proceedings and ex parte
appeals by hiring additional judges. Even with continued hiring,
however, increases in filings and the growing number of cases may
strain the PTAB's continuing ability to make timely decisions and meet
statutory deadlines. Therefore, the agency wishes to explore and gain
data on a potentially more efficient alternative to the current three-
judge institution model. Having a single judge decide whether to
institute trial in a post grant proceeding, instead of a panel of three
judges, would allow more judges to be available to attend to other
matters, such as reducing the ex parte appeal backlog and handling more
post grant proceedings.
Background: As discussed previously, the AIA provides for IPR, PGR,
and CBM trials, under which a petitioner may seek cancellation of one
or more claims of a patent. The AIA provides that the Director decides
whether to institute an IPR, PGR, or CBM trial. See 35 U.S.C. 314 and
324. 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. See
35 U.S.C. 314(a). A PGR or CBM is not instituted unless 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. See 35 U.S.C. 324(a). Alternatively, a PGR or
CBM may be instituted where the petition raises a novel or unsettled
legal question that is important to other patents or patent
applications. See 35 U.S.C. 324(b). Once instituted, and after a trial
is conducted, the PTAB issues a final written decision with respect to
the patentability of any patent claim challenged by the petitioner and
any new claim added during the review. See 35 U.S.C. 318 and 328. The
final determination in an IPR, PGR, or CBM must, with limited
exceptions, be issued not later than one year after the date on which
the institution of the IPR, PGR, or CBM is noticed. See 35 U.S.C.
316(a)(11) and 326(a)(11); 37 CFR 42.100(c), 200(c), and 300(c).
The authority to determine whether to institute and conduct a trial
has been delegated to a Board member or employee acting with the
authority of the Board. See 37 CFR 42.4; see also Rules of Practice for
Trials Before the Patent Trial and Appeal Board and Judicial Review of
Patent Trial and Appeal Board Decisions, 77 FR 48612, 48647 (Aug. 14,
2012). As a result, neither the AIA nor the USPTO's rules require that
an institution decision be made by a panel of multiple individuals
within the USPTO. The AIA does, however, require that the final written
decision in an IPR, PGR, or CBM be rendered by a panel of at least
three APJs. See 35 U.S.C. 6(c). The PTAB has developed the practice of
deciding whether to institute an IPR, PGR, or CBM trial via three-APJ
panels, and then conducting the trial, if instituted, usually by the
same three-APJ panel.
Proposed Pilot Program: The USPTO is seeking input on whether to
conduct a pilot program under which a single APJ would decide whether
to institute an IPR trial, with two additional APJs being assigned to
conduct the IPR trial, if instituted. Under this pilot program, any IPR
trial will be conducted by a panel of three APJs, two of whom were not
involved in the determination to institute the IPR.
Conduct of Proposed Pilot Program: The USPTO is considering
selecting certain petitions for inclusion in the proposed pilot program
from among all IPR petitions filed during a specific period. The
selection would continue for at least three and up to six months. The
pilot program would be limited to IPRs. The USPTO would consider the
results of this pilot program to determine whether and to what degree
to implement this approach more generally in the future, for example,
potentially only in response to an unusually high volume of petitions.
Due to the inter partes nature of IPR trials and the need to avoid
selection bias during the evaluation of the results, it is not
practical to allow petitioners or patentees to request participation
in, or exclusion from, the pilot program.
Finally, it is possible that an IPR initially selected for the
single-APJ pilot program will ultimately be determined unsuitable for
inclusion in the pilot. In such a situation, the IPR would be removed
from the proposed single-APJ pilot program.
Assignment of Trial Panel under the Single-Judge Pilot Program: If
the single-APJ decision results in institution of trial, the PTAB
would, after institution, assign two additional APJs to the panel for
rendering interlocutory decisions, as needed, and for issuing a final
written decision on the merits. The PTAB may assign three new APJs to
the panel, for example, in the rare circumstance that the APJ who
granted the institution is not available to sit on the panel post
institution or where, due to workloads, it would be more efficient to
assign a new three-judge panel to the proceeding. When possible, the
trial panel assignment would maintain the role of the single APJ as the
judge generally managing the proceeding during trial. This would ensure
that the judge most familiar with the IPR has the responsibility of
coordinating interlocutory activity with the parties during trial.
Scheduling Order: Typically, when trial is instituted, a scheduling
order is entered concurrently with the decision on institution. To
allow for coordination of deadlines and the trial panel's availability
for oral argument and other due dates, the scheduling order in trials
instituted pursuant to a decision under this pilot program will not be
entered concurrently with the decision on institution. The PTAB expects
that, after the trial panel is notified of the assignment, the panel
will issue promptly a scheduling order for the IPR.
Question for Public Comment: The USPTO is inviting written comments
from any member of the public on the pilot program under consideration.
Specifically, the USPTO is seeking comment on any issue relevant to the
design and implementation of a pilot program under which an IPR trial
is conducted by a panel of three APJs in which two of the APJs were not
involved in the determination to institute the IPR. In particular, the
USPTO is seeking public input on the following questions.
Questions
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?
[[Page 51542]]
Dated: August 20, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2015-21052 Filed 8-24-15; 8:45 am]
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