[Federal Register Volume 80, Number 212 (Tuesday, November 3, 2015)]
[Page 67734]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-28107]



United States Patent and Trademark Office

[Docket No.: PTO-P-2015-0055]

Proposed Pilot Program Exploring an Alternative Approach to 
Institution Decisions in Post Grant Administrative Reviews; Reopening 
of Period for Comments

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments; reopening of comment period.


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), Public Law 
112-29, 125 Stat. 284 (2011). The AIA provides for the following post 
grant administrative trials: Inter Partes Review (IPR), Post-Grant 
Review (PGR), and Covered Business Method Patent Review (CBM). The 
USPTO currently has a panel of three Administrative Patent Judges 
(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. 
The USPTO published a request for comments in the Federal Register on 
August 25, 2015, seeking public comment on a proposed pilot program 
pertaining to the institution and conduct of these post grant 
administrative trial proceedings. See Request for Comments on a 
Proposed Pilot Program Exploring an Alternative Approach to Institution 
Decisions in Post Grant Administrative Reviews, 80 FR 51540 (Aug. 25, 
2015). The USPTO is now extending the period for public comment until 
November 18, 2015.

DATES: Comment Deadline Date: Written comments on the notice published 
August 15, 2015 (80 FR 51540) must be received on or before November 
18, 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.

Administrative Patent Judge by telephone at (571) 272-9797.

SUPPLEMENTARY INFORMATION: 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 proactively 
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 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 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. The request for comments on the proposed pilot 
indicated that written comments must be received on or before October 
26, 2015. See id. at 51540. In view of stakeholder requests for 
additional time to submit comments on the new administrative trial 
proceedings, the USPTO is now extending the period for public comment 
until November 18, 2015.

    Dated: October 29, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2015-28107 Filed 11-2-15; 8:45 am]