Federal Register, Volume 89 Issue 114 (Wednesday, June 12, 2024)

[Federal Register Volume 89, Number 114 (Wednesday, June 12, 2024)]
[Rules and Regulations]
[Pages 49808-49815]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-12823]

=======================================================================
-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 43

[Docket No. PTO-P-2023-0012]
RIN 0651-AD68

Rules Governing Pre-Issuance Internal Circulation and Review of
Decisions Within the Patent Trial and Appeal Board

AGENCY: United States Patent and Trademark Office, Department of
Commerce.

ACTION: Final rule.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (``USPTO'' or
``Office'') is amending the rules of

[[Page 49809]]

practice before the Patent Trial and Appeal Board (``PTAB'' or
``Board'') to add a new rule governing the pre-issuance circulation and
review of decisions within the PTAB. The rule promotes the efficient
delivery of reliable intellectual property rights by promoting
consistent, clear, and open decision-making processes at the PTAB.

DATES: This rule is effective July 12, 2024.

FOR FURTHER INFORMATION CONTACT: Melissa A. Haapala, Vice Chief
Administrative Patent Judge, or Stacy B. Margolies, Acting Senior Lead
Administrative Patent Judge, at 571-272-9797.

SUPPLEMENTARY INFORMATION:

Executive Summary

To promote consistent, clear, and open decision-making processes,
the USPTO issued an interim process for PTAB decision circulation and
internal PTAB review in May 2022. The processes were put in place to
support a consistent and clear approach to substantive areas of patent
law and PTAB-specific procedures, while maintaining open decision-
making processes. The USPTO subsequently issued a Request for Comments
(RFC) seeking public input on these processes. 87 FR 43249-52 (July 20,
2022); 87 FR 58330 (Sept. 26, 2022) (extending comment period). After
reviewing feedback received from the public in response to the RFC, the
USPTO made some modifications to the interim process and issued a
Standard Operating Procedure 4 (SOP4) on October 5, 2023, available at
https://www.uspto.gov/sites/default/files/documents/ptab_sop_4-2023-oct.pdf. The processes set forth in SOP4 replaced the former interim
process and provided further details requested by the public. Following
the proposed rule and solicitation of public comments, 88 FR 69578
(Oct. 6, 2023), this final rule revises the rules of practice to
implement, in regulation, key aspects of the processes used for
circulation and review of decisions within the PTAB.
This final rule provides that the USPTO Director, Deputy Director,
and Commissioners for Patents and Trademarks are not involved, directly
or indirectly, in the decision-making of panels of the PTAB prior to
issuance of a decision by the panel. In addition, no PTAB Management
Judge nor any officer or employee of the Office external to the Board
is involved, directly or indirectly, in panel decision-making unless a
panel member has requested their input or they are a member of the
panel. The adoption of any feedback received by the panel is entirely
optional and solely within the discretion of the panel.
This final rule also requires that if the Office establishes
additional procedures governing the internal circulation and review of
decisions prior to issuance, no Management Judge or officer or employee
external to the Board shall participate, either directly or indirectly,
in any such review. The adoption of any feedback received pursuant to
such review is entirely optional and solely within the discretion of
the panel.
Finally, this final rule provides that decisions of the Board are
expected to comport with all statutes, regulations, binding case law,
and written Office policy and guidance applicable to Board proceedings.
The rule further provides that all policy and guidance binding on
panels of the Board shall be in writing and made public.

Background

On September 16, 2011, the America Invents Act (AIA) was enacted
into law (Pub. L. 112-29, 125 Stat. 284 (2011)). The AIA established
the PTAB, which is made up of administrative patent judges (APJs) and
four statutory members, namely the USPTO Director, the USPTO Deputy
Director, the USPTO Commissioner for Patents, and the USPTO
Commissioner for Trademarks. 35 U.S.C. 6(a). In panels of at least
three members, the PTAB hears and decides ex parte appeals of adverse
decisions by examiners in applications for patents; appeals of adverse
decisions by examiners in reexamination proceedings; and proceedings
under the AIA, including inter partes reviews, post-grant reviews, and
derivation proceedings. 35 U.S.C. 6(b), (c). Under the statute, the
Director designates the members of each panel. 35 U.S.C. 6(c). The
Director has delegated that authority to the Chief Judge of the PTAB.
See PTAB Standard Operating Procedure 1 (Revision 15) (SOP1),
Assignment of Judges to Panels, available at https://www.uspto.gov/sites/default/files/documents/SOP%201%20R15%20FINAL.pdf.

Interim Process, SOP4, and CJP

The Office recognizes that it is important that the PTAB maintain a
consistent and clear approach to substantive areas of patent law and
PTAB-specific procedures, while maintaining open decision-making
processes. Starting in May 2022, the USPTO used an interim process for
PTAB decision circulation and internal PTAB review. See ``Interim
process for PTAB decision circulation and internal PTAB review,''
available at https://www.uspto.gov/interim-process-ptab-decision-circulation-and-internal-ptab-review. That interim process was replaced
by SOP4, which issued October 5, 2023. The processes set forth in SOP4
are substantially similar to the interim process, except for the change
described below to the Circulation Judge Pool (CJP) review. SOP4
further sets forth additional details requested by stakeholders.
Under the prior interim process, certain categories of PTAB
decisions were required to be circulated to the CJP, a pool of non-
management APJs, prior to issuance. To provide for judicial
independence and in response to stakeholder feedback, under the process
set forth in SOP4, circulation to the CJP is now optional. The CJP is
made up of a representative group of non-management APJs who
collectively have technical/scientific backgrounds and legal experience
that reflects the PTAB judges as a whole. The CJP is modeled after both
the Federal Circuit's previous circulation to the Senior Technical
Assistant and the Federal Circuit's 10-day circulation process for
precedential decisions. See United States Court of Appeals for the
Federal Circuit, Internal Operating Procedures, Redlined Copy, 18 (Mar.
1, 2022), available at https://cafc.uscourts.gov/wp-content/uploads/RulesProceduresAndForms/InternalOperatingProcedures/IOPs-Redline-03012022.pdf (describing the previous circulation to the Senior
Technical Assistant); United States Court of Appeals for the Federal
Circuit, Internal Operating Procedures, 10 section 5 (July 22, 2022),
available at https://cafc.uscourts.gov/wp-content/uploads/RulesProceduresAndForms/InternalOperatingProcedures/InternalOperatingProcedures.pdf (describing the 10-day circulation
process for precedential decisions).
The CJP's role is to provide the panel with information regarding
potential conflicts or inconsistencies with relevant authority,
including PTAB precedential decisions, director guidance memoranda, and
other written Office and Board policies and guidance. The CJP also
provides the panel with information regarding potential inconsistencies
with informative or routine PTAB decisions and suggestions for improved
readability and stylistic consistency. The panel has the final
authority and responsibility for the content of a decision and
determines when and how to incorporate feedback from the CJP. The APJs
on the panel are required to apply pertinent statutes, rules, binding
case law, and written policy and guidance issued by the Director or the
Director's delegate that is

[[Page 49810]]

applicable to PTAB proceedings. All policies and guidance applicable to
PTAB proceedings that the APJs are required to apply are written.
The CJP may have periodic meetings with PTAB Executive Management
(i.e., PTAB Chief Judge, Deputy Chief Judge, Vice Chief Judges, Senior
Lead Judges, and those acting in any of the foregoing positions) to
discuss issued panel decisions and general areas for potential policy
clarification. PTAB Executive Management may discuss these issued
decisions or areas for potential policy clarification with the Director
for the purposes of (i) considering whether to issue new or updated
policies or guidance, for example, through regulation, precedential or
informative decisions, and/or a Director guidance memorandum; and (ii)
considering sua sponte (i.e., on the Director's own initiative)
Director Review of a decision.
With respect to PTAB management (i.e., PTAB Executive Management
and Lead Judges), under the interim process, any panel member, at their
sole discretion, could consult with one or more management team members
regarding a decision prior to issuance. SOP4 builds on that process and
sets forth details on how a panel member may optionally consult with a
designated PTAB Management Pre-Issuance Optional Review team in
addition to the CJP described above. The team is designated by PTAB
Executive Management and may include a Vice Chief Judge, a Senior Lead
Judge, Lead Judges, and those acting in any of the foregoing positions.
If consulted, the PTAB Management Pre-Issuance Optional Review Team can
provide information regarding the consistent application of USPTO and
Board policy, applicable statutes and regulations, and binding case
law. Adoption of any suggestions provided as a result of such
consultation is optional. Unless consulted by a panel member, PTAB
management does not make suggestions to a panel regarding the substance
of any pre-issuance decision, either directly or indirectly through the
CJP.
The PTAB internal circulation and review processes set forth in
SOP4 promote decisional consistency and open decision-making by
reinforcing that the adoption of all the CJP and requested PTAB
management feedback is optional, that members of PTAB management do not
provide feedback on decisions prior to issuance unless they are a panel
member or a panel member requests such feedback, and that the PTAB
panel has the final authority and responsibility for the content of a
decision. Additionally, the processes provide a mechanism by which the
Director could be made aware of decisions to consider for sua sponte
Director Review and areas to consider for issuing new or modified USPTO
or Board policy to promote the efficient delivery of reliable
intellectual property rights.
All consultations are covered by conflict of interest policies. If
a member of the CJP or PTAB management has a conflict of interest, they
are required to notify the other members of their respective team and
recuse themselves from any discussion or analysis of that decision. In
determining whether a conflict of interest exists, the USPTO follows
the guidance set forth in the Standards of Ethical Conduct for
Employees of the Executive Branch at 5 CFR part 2635 and will consult
with the Department of Commerce Ethics Law and Programs Office, as
necessary, to resolve any questions pertaining to conflicts of
interest.

Request for Comments

In response to the RFC issued in July 2022, 87 FR 43249-52, and
extended in September, 87 FR 58330 (September 26, 2022), the USPTO
received over 4,300 comments from a wide range of stakeholders,
including individuals, associations, and companies, on all aspects of
the RFC, including specific responses to question 13 (which asked if
any changes should be made to the interim PTAB decision circulation and
review processes) and question 14 (which asked what other
considerations should be taken into account with respect to the interim
PTAB decision circulation and internal review processes). All of the
comments are publicly available at the Federal eRulemaking Portal at
https://www.regulations.gov/document/PTO-P-2022-0023/comments.
Several commenters emphasized the need for judicial independence
and review processes that reduce influence by USPTO senior management
on PTAB panels. Other commenters emphasized the value of transparency
in the PTAB's processes and requested that further details on the CJP
be made public. One commenter stated that, even when the CJP reviews a
decision prior to issuance, it should not discuss the decision with
PTAB management until the decision is issued by the panel. Another
commenter believed that the value of the CJP may be outweighed by
concerns with undue pre-issuance influence by the Director and
suggested abandoning the CJP procedure in favor of entrusting the APJs
and the Director Review process with maintaining consistency and
quality of PTAB decisions.

Proposed Rule: Comments and Responses

On October 6, 2023, after careful consideration of the public input
received in response to the RFC, the USPTO published a notice of
proposed rulemaking to set forth the policies and standards that govern
internal pre-issuance circulation and review of decisions within the
PTAB. See 88 FR 69578. The notice of proposed rulemaking provided for a
60-day comment period.
The Office received a total of nine comments from eight
organizations and one individual. The Office appreciates the thoughtful
comments representing views from various public stakeholder
communities. All of the comments are publicly available at the Federal
eRulemaking Portal at https://www.regulations.gov/document/PTO-P-2023-0012-0001.
Commenters were generally supportive of the proposed rule and
agreed with the Office that the rule would promote consistent, clear,
and open decision-making processes. A few commenters suggested some
modifications to certain provisions of the proposed rule. A summary of
the comments and the USPTO's responses are provided below. The Office's
responses address the comments that are directed to the proposed
changes set forth in the notice of proposed rulemaking. Any comments
directed to topics that are beyond the scope of the notice of proposed
rulemaking are not addressed.
Comment 1: One commenter suggested that pre-issuance review by
nonpanel members should be eliminated because the harms outweigh any
potential benefits. Another commenter acknowledged that discussions
among fellow judges can improve the quality and consistency of
decisions. However, this commenter suggested that any such discussions
with nonpanel members should be kept at a general level and should not
include the specific facts or issues presented by a particular case.
Response: The USPTO agrees with commenters who noted that internal
pre-issuance circulation and review of decisions within the PTAB helps
to promote consistent, clear, and open decision-making processes and,
therefore, the USPTO does not adopt the suggestions to eliminate
optional pre-issuance review or to keep discussions at a general level.
The pre-issuance review processes set forth in the rule are consistent
with processes adopted by courts. For example, as described above, the
CJP was modeled after both the

[[Page 49811]]

Federal Circuit's previous circulation to the Senior Technical
Assistant and the Federal Circuit's 10-day circulation process for
precedential decisions. Also, judges in other tribunals often consult
with fellow judges in order to take advantage of accumulated
experience. The Office also notes that any pre-issuance review at the
PTAB by the CJP or other nonpanel judges is entirely optional and helps
the PTAB maintain a consistent and clear approach, which is important
to stakeholders and the patent system at large.
Comment 2: One commenter suggested that, to the extent case-
specific facts or issues are discussed outside of the panel, either
with Management or non-Management Judges, the content of those
discussions should be disclosed to the parties of record. Another
commenter recognized that full transparency on this matter may not be
practical or even desirable and, therefore, suggested that the Office
provide statistical information regarding how often a panel seeks input
from PTAB management.
Response: The Office appreciates these thoughtful comments
regarding transparency. However, because the requests for input from
nonpanel members are part of the deliberative process, the Office will
not publicly disclose information regarding such requests. As one
commenter acknowledged, the APJs should feel comfortable seeking
internal input to promote consistency and efficiency without the
potential chilling effects of public scrutiny before a decision is
rendered. The Office also notes that other tribunals with similar
processes, such as the U.S. Court of Appeals for the Federal Circuit,
also do not disclose such information.
Further, it is unlikely that meaningful statistics could be
provided because it would not be possible to track every time a judge
informally reaches out to a nonpanel member for input. The use of
statistics to track every instance of such behavior could discourage
judges from seeking such input, which is beneficial for a consistent
and clear approach at the Board. The Office will continue to provide
other statistics that are useful to the public, such as those regarding
Director Review requests and decisions.
Comment 3: Two commenters expressed concern about the language in
proposed Sec. 43.6 that all decisions of the Board are expected to
comport with ``written agency policy and guidance applicable to Board
proceedings'' in addition to applicable statutes, regulations, and
binding case law. One of the commenters suggested deleting this
language because any policy that is important enough for the Board to
follow should undergo the rulemaking procedures of the Administrative
Procedure Act (APA). The other commenter recognized that, in some
circumstances, the USPTO will need to act before APA rulemaking can be
completed--for example, when responding to a court decision
invalidating USPTO policy or in response to other exigencies. That
commenter suggested revising the language such that, under compelling
circumstances, Board decisions would be required to comport with
temporary policy or guidance, which shall expire within 18 months
unless replaced by a rule implemented via notice-and-comment
rulemaking.
Response: These suggestions are not adopted. The Office will retain
the language regarding comporting with ``written agency policy and
guidance applicable to Board proceedings'' (except for replacing
``agency'' with ``Office,'' as explained below) because notice-and-
comment rulemaking is not required for all Office policy and guidance
applicable to Board proceedings. See, e.g., 5 U.S.C. 553(b)(3)(A);
Lincoln v. Vigil, 508 U.S. 182, 196-97 (1993). The Office seeks to
retain flexibility in implementing written guidance to efficiently and
transparently address the workings of the Board and to maintain
consistency in proceedings. As stated in the rule, all policy and
guidance binding on panels of the Board is written and made public.
Comment 4: One commenter suggested that if the Office establishes
procedures governing internal circulation and review of decisions to
one or more designated non-Management Judges, that the Office should
first obtain public input on such procedures.
Response: The USPTO agrees that it is important to obtain public
input on procedures governing internal circulation and review of
decisions at the Board. The Office issued a Request for Comments
seeking input on its interim PTAB decision circulation and internal
review processes, including the requirement to circulate decisions to a
pool of non-Management Judges. After considering the public input
received in response to the RFC, the USPTO replaced the interim process
with SOP4, which sets forth the details of the optional circulation
process to the CJP and further details of the composition of the CJP.
The final rule further specifies limits governing any procedures
created for internal circulation and review of decisions prior to
issuance by one or more designated members of the Board (such as a
CJP), including that no Management Judge or an officer or employee
external to the Board shall participate directly or indirectly in any
such review.
Comment 5: One commenter observed that Congress expressly assigned
decisions on institution to the Director and suggested adding a
provision to Sec. 43.3 to reinforce that the Director alone, rather
than a panel, may issue a decision on institution.
Response: The Office does not adopt this suggestion and notes that
it appears to be based on a misapprehension of the rule. The rule does
not preclude paneling a proceeding to the Director alone prior to
institution provided it is done in accordance with public Board
paneling guidance. As a general matter, however, the Director will
exercise authority and oversight over decisions on institution, as well
as final written decisions, pursuant to the Director Review process. As
provided by the final rule, the Director is not involved, directly or
indirectly, in the decision-making of panels at the PTAB prior to
issuance of a decision by the panel.
Comment 6: One commenter suggested modifications to some of the
definitions set forth in Sec. 43.2 and minor modifications to certain
other provisions of the rules.
Response: The USPTO appreciates the thoughtful suggestions and
careful review of the proposed rule. The Office adopts the suggestion
to modify the definition of ``Panel'' set forth in Sec. 43.2 to remove
the reference to Standard Operating Procedure 1. The Office further
adopts the suggestion to modify Sec. 43.3(b) to clarify that the
prohibition of paragraph (a) shall not apply to an individual in
paragraph (a) who is a member of the panel. In view of the additional
suggestions, the Office made minor modifications to Sec. 43.4(b) and
(c) to clarify that a panel member may additionally request input from
an officer or employee of the Office external to the Board and that it
is within the sole discretion of the panel to adopt any edits,
suggestions, or feedback provided to the panel as part of a review
requested under paragraph (b). For example, as described in SOP4, a
panel member may seek input from a PTAB Management Pre-Issuance
Optional Review team regarding a decision prior to issuance and may
optionally seek input from another USPTO business unit by indicating
that in its request. See SOP4 section II. The Office further agrees
that Management Judges do not exercise review authority over a
proceeding, and, accordingly, adopts the suggestion to eliminate the
proposed provision from Sec. 43.4(d)

[[Page 49812]]

related to the review authority over the proceeding. After careful
consideration, the Office does not adopt the remaining minor
suggestions. For example, the suggestion to add additional open-ended
language to the definition of ``Proceeding'' set forth in Sec. 43.2
was not adopted because the definition set forth in the final rule
encompasses all proceedings assigned to the Board.
Comment 7: One commenter requested clarification on the scope and
timing of pre-issuance review and the composition and qualification of
the review teams. The commenter further requested clarification on the
types of decisions eligible for review and how the PTAB will resolve
conflicts or disagreements between reviewers and panel members.
Additionally, the commenter requested clarification on how review will
affect the finality or appealability of PTAB decisions. The commenter
suggested that the rule or an accompanying guidance document explain
these details.
Response: The USPTO agrees that clarification of certain details
regarding pre-issuance review is important. SOP4 sets forth the details
on the composition of the CJP and the designated PTAB Management Pre-
Issuance Optional Review Team as well as further details on the review
processes. Under SOP4, a panel member may, at their sole discretion,
choose to circulate any decision for pre-issuance review by the CJP or
the PTAB Management Pre-Issuance Optional Review team. As set forth in
SOP4 and the final rule, the panel has the sole discretion to adopt any
suggestions or edits made from any optional pre-issuance review it
seeks. SOP4 also sets forth details on the post-issuance review
process, which may be used to flag decisions to the Director for
further action, including consideration for sua sponte Director Review.
The details of the Director Review process, including how a party may
request Director Review and the appealability of Director Review
decisions, are set forth on the Revised Interim Director Review process
web page, available at https://www.uspto.gov/patents/ptab/decisions/revised-interim-director-review-process.

Changes From the Proposed Rule

Upon careful consideration of the public comments, the Office
adopts the provisions in the proposed rule with minor changes for
additional clarity and consistency, which are noted below.
In this final rule, the Office modifies the title of Sec. 43.1 to
``Scope'' and clarifies that the definition of ``Management Judge'' set
forth in Sec. 43.2 includes individuals that serve as a rating
official for one or more Administrative Patent Judges. For clarity, the
Office adds a definition of ``Office'' to Sec. 43.2 and, for
consistency in the rule, replaces ``agency'' with ``Office'' in Sec.
43.6. The Office eliminates the reference to Standard Operating
Procedure 1 from the definition of ``Panel'' in Sec. 43.2 and
clarifies that the panel members are assigned to a particular
proceeding or an aspect thereof. The Office also clarifies that the
definition of ``Proceeding'' set forth in Sec. 43.2 includes any
proceeding under part 42. The Office modifies the title of Sec. 43.3
to clarify that Sec. 43.3 places limits on the Director's and other
individuals' involvement in panel decisions. The Office modifies Sec.
43.3(b) to delete ``proceeding'' and clarify that the prohibition does
not apply to any individual in paragraph (a) who is a member of the
panel. The Office adds a minor provision to Sec. 43.3(d) to clarify
that the Chief Administrative Patent Judge or delegates shall panel or
repanel proceedings only in accordance with public Board paneling
guidance. The Office makes minor modifications to Sec. 43.4(b) and (c)
to clarify that a panel member may request input from an officer or
employee of the Office external to the Board, adds ``officer'' to Sec.
43.4(a), and adds ``Office'' to the title of Sec. 43.4. The Office
modifies Sec. 43.4(d) to eliminate ``and exercises no review authority
over the proceeding prior to the issuance of the panel's decision on
the merits.'' The Office modifies Sec. 43.5(a) to add an officer or
employee external to the Board also shall not participate in any review
of decisions by non-management judges.

Discussion of Specific Rules

Upon careful consideration of the public comments, the Office
adopts the proposed rule with a few minor changes in the rule language,
as discussed above. This final rule adds part 43 to set forth
regulations governing the pre-issuance circulation and review of
decisions within the PTAB. The USPTO issues this final rule to promote
consistent, clear, and open decision-making processes while protecting
judicial independence and increasing transparency of USPTO processes.
The USPTO adds Sec. 43.1 to define the scope of the rules set
forth in part 43.
The USPTO adds Sec. 43.2 to set forth definitions for terms used
in part 43.
The USPTO adds Sec. 43.3 to specify that the Director and other
high-level officers of the USPTO are not involved in panel decisions
prior to their issuance, either directly or indirectly.
The USPTO adds Sec. 43.3(a) to prohibit the Director, Deputy
Director, Commissioner for Patents, and Commissioner for Trademarks
from communicating, directly or indirectly, with any member of a panel
regarding a decision, prior to issuance of that decision by the panel.
The USPTO adds Sec. 43.3(b) to provide that paragraph (a) does not
apply to any individual in paragraph (a) who is a member of the panel
and also specifies that when sitting as a member of a panel, the
individual is a coequal member of the panel and the individual
exercises no review authority over the proceeding prior to the issuance
of the panel's decision on the merits.
The USPTO adds Sec. 43.3(c) to clarify that nothing in Sec. 43.3
shall prevent the Director or their delegate from communicating with a
panel as to resource needs or the procedural status of any proceeding.
This provision permits Office leadership to engage in communications of
a purely administrative or logistical nature that are necessary to
ensure the effective and efficient administration of the Office.
Communications with a panel attempting to influence or direct the
outcome or reasoning of any decision is not permitted under this
provision.
The USPTO adds Sec. 43.3(d) to specifically delegate to the Chief
Administrative Patent Judge the Director's power to designate panels of
the Board under 35 U.S.C. 6(c). This provision specifies that the Chief
Administrative Patent Judge and delegates of the Chief Administrative
Patent Judge shall panel or repanel proceedings only in accordance with
public Board paneling guidance. This provision prohibits the Director
from directing or otherwise influencing the paneling or repaneling of
any proceeding prior to issuance of the panel decision. The provision
permits the Director to issue generally applicable paneling guidance to
be applied to proceedings before the Board. The provision further
permits the Director, when reviewing or rehearing an issued panel
decision, to direct the repaneling of the proceeding in a manner
consistent with public Board paneling guidance, through an Order
entered into the record.
The USPTO adds Sec. 43.4 to limit involvement by Board management
or an officer or employee of the Office external to the Board in the
review and circulation of decisions prior to issuance. The provision
ensures judicial independence of Board panels while permitting a panel
member to request input on issues when desired.
The USPTO adds Sec. 43.4(a) to prohibit any Management Judge or an
officer or employee of the Office external to the Board from initiating
communication,

[[Page 49813]]

directly or through intermediaries, with any member of a panel
regarding a decision, prior to issuance of that decision.
The USPTO adds Sec. 43.4(b) to provide an exception to paragraph
(a) in the event a member of the panel requests input from a Management
Judge or an officer or employee of the Office external to the Board
prior to issuance of the decision. This provision specifies that
requesting input is optional and the decision to request input is
solely within the discretion of an individual panel member.
The USPTO adds Sec. 43.4(c) to specify that it is within the
panel's sole discretion to adopt any edits, suggestions, or feedback
provided by a Management Judge or an officer or employee of the Office
external to the Board received in response to a request for input, and
the panel has the final authority and responsibility for the content of
a decision.
The USPTO adds Sec. 43.4(d) to provide that paragraph (a) does not
apply to a Management Judge who is a member of the panel and specifies
that when sitting as a member of a panel, a Management Judge is a
coequal member of the panel.
The USPTO adds Sec. 43.4(e) to clarify that nothing in Sec. 43.4
shall prevent a Management Judge from communicating with a panel as to
resource needs or the procedural status of any proceeding. This
provision permits Board management to engage in communications of a
purely administrative or logistical nature that are necessary to ensure
the effective and efficient administration of the Board. Communications
with a panel attempting to influence or direct the outcome or reasoning
of any decision are not permitted under this provision.
The USPTO adds Sec. 43.5 to govern procedures for circulation of
decisions to, and review of decisions by, a designated group of non-
Management Judges if the Office sets forth additional procedures for
such circulation. The provision promotes consistent, clear, and open
decision-making by permitting peer review of decisions prior to
issuance, while respecting the judicial independence of panels by
providing that all feedback from such review is optional and at the
panel's sole discretion to adopt.
The USPTO adds Sec. 43.5(a) to provide that no Management Judge or
an officer or employee external to the Board shall participate in any
such circulation and review procedures. This provision further provides
that if a decision is circulated to the designated non-Management
Judges for review prior to issuance, the reviewing judges will not
discuss the substance of the circulated decision with a Management
Judge prior to issuance by the panel, except with a Management Judge
who is a member of the panel.
The USPTO adds Sec. 43.5(b) to specify that any edits,
suggestions, or feedback provided following circulation and review to
the designated non-Management Judges are optional and in the sole
discretion of a panel to accept. This provision also sets forth that
the panel has final authority and responsibility for the content of a
decision and determines whether and how to incorporate any feedback
provided.
The USPTO adds Sec. 43.6 to provide that all decisions of the
Board are expected to comport with all applicable statutes,
regulations, binding case law, and written Office policy and guidance
applicable to Board proceedings. This provision also specifically
states that there is no unwritten Office or Board policy or guidance
that is binding on any panel of the Board and further requires that all
written policy and guidance binding on panels of the Board shall be
made public. Thus, this provision makes clear there is no unwritten or
non-public guidance that judges are required to follow.

Rulemaking Considerations

A. Administrative Procedure Act: The changes in this rulemaking
involve rules of agency practice and procedure and/or interpretive
rules. See Perez v. Mortg. Bankers Ass'n, 135 S.Ct 1199, 1204 (2015)
(Interpretive rules ``advise the public of the agency's construction of
the statutes and rules which it administers.'' (citation and internal
quotation marks omitted)); Nat'l Org. of Veterans' Advocates, Inc. v.
Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (Rule
that clarifies interpretation of a statute is interpretive.).
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) or any other law. See
Perez, 135 S. Ct. 1199, 1206 (Notice-and-comment procedures are
required neither when an agency ``issue[s] an initial interpretive
rule'' nor ``when it amends or repeals that interpretive rule.'');
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008)
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not
require notice and comment rulemaking for ``interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice'') (quoting 5 U.S.C. 553(b)(3)(A)).
However, the USPTO chose to seek public comment before implementing
the rule to benefit from the public's input.
B. Regulatory Flexibility Act: For the reasons set forth herein,
the Senior Counsel for Regulatory and Legislative Affairs, Office of
General Law, United States Patent and Trademark Office, has certified
to the Chief Counsel for Advocacy of the Small Business Administration
that this rule will not have a significant economic impact on a
substantial number of small entities. See 5 U.S.C. 605(b).
The rule sets forth expressly the rules governing the circulation
and review of decisions of the Board prior to issuance by a panel. The
changes do not create additional procedures or requirements or impose
any additional compliance measures on any party, nor do these changes
cause any party to incur additional cost. Therefore, any requirements
resulting from the rule are of minimal or no additional burden to those
practicing before the Board.
For the foregoing reasons, this rulemaking will not have a
significant economic impact on a substantial number of small entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (September 30, 1993), as amended by Executive
Order 14094 (April 6, 2023).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563 (January
18, 2011). Specifically, and as discussed above, the Office has, to the
extent feasible and applicable: (1) made a reasoned determination that
the benefits justify the costs of the rules; (2) tailored the rules to
impose the least burden on society consistent with obtaining the
regulatory objectives; (3) selected a regulatory approach that
maximizes net benefits; (4) specified performance objectives; (5)
identified and assessed available alternatives; (6) involved the public
in an open exchange of information and perspectives among experts in
relevant disciplines, affected stakeholders in the private sector and
the public as a whole, and provided on-line access to the rulemaking
docket; (7) attempted to promote coordination, simplification, and
harmonization across government agencies and identified goals designed
to promote innovation; (8) considered approaches that reduce burdens
and maintain flexibility and freedom of choice for the public; and (9)
ensured the objectivity of

[[Page 49814]]

scientific and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking pertains
strictly to Federal agency procedures and does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (August 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (November
6, 2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (February 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (April
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not affect a taking of private property or otherwise
have taking implications under Executive Order 12630 (March 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), the USPTO will submit a report containing
the rule and other required information to the United States Senate,
the United States House of Representatives, and the Comptroller General
of the Government Accountability Office. The changes in this rulemaking
are not expected to result in an annual effect on the economy of 100
million dollars or more, a major increase in costs or prices, or
significant adverse effects on competition, employment, investment,
productivity, innovation, or the ability of United States-based
enterprises to compete with foreign-based enterprises in domestic and
export markets. Therefore, this rulemaking is not a ``major rule'' as
defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes set forth in
this rulemaking do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501 et seq.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501-3549) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the
public. This rulemaking does not involve an information collection
requirement that is subject to review by the Office of Management and
Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-
3549). This rulemaking does not add any additional information
requirements or fees for parties before the Board.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall any person be subject to, a penalty for
failure to comply with a collection of information subject to the
requirements of the Paperwork Reduction Act unless that collection of
information displays a currently valid OMB control number.
P. E-Government Act Compliance: The USPTO is committed to
compliance with the E-Government Act to promote the use of the internet
and other information technologies, to provide increased opportunities
for citizen access to Government information and services, and for
other purposes.

List of Subjects in 37 CFR Part 43

Administrative practice and procedure.

0
For the reasons set forth in the preamble, the USPTO amends title 37 by
adding part 43 to read as follows:

PART 43--DECISION CIRCULATION AND REVIEW WITHIN THE PATENT TRIAL
AND APPEAL BOARD

Sec.
43.1 Scope.
43.2 Definitions.
43.3 Limits on Director's and other individuals' involvement in
panel decisions.
43.4 Limited pre-issuance management and Office involvement in
decisions.
43.5 Review of decisions by non-Management Judges.
43.6 Controlling legal authority; no unwritten or non-public binding
policy or guidance.

Authority: 35 U.S.C. 2(b)(2), 6, 134, 135, 311, 316, 321, and
326.

Sec. 43.1 Scope.

This part sets forth procedures for the pre-issuance circulation
and review within the Patent Trial and Appeal Board of draft panel
decisions rendered in proceedings pending under parts 41 and 42 of this
chapter and sets forth the controlling legal authority, policy, and
guidance applicable to the decisions of the Board.

Sec. 43.2 Definitions.

The following definitions apply to this part:
Board means the Patent Trial and Appeal Board.
Decision means any decision, order, opinion, or other written work
product intended for entry into the record of a Board proceeding.
Deputy Director means the Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the United States Patent
and Trademark Office, or an individual serving as Acting Deputy
Director.
Director means the Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office,
or an individual serving as Acting Director or performing the functions
and duties of the Director.
Commissioner for Patents and Commissioner for Trademarks mean the
positions defined in 35 U.S.C. 3(b)(2), or an individual acting in the
capacity of one of those positions.
Issuance means the entry of a decision into the record of a Board
proceeding.
Management Judge means the Chief Administrative Patent Judge, the
Deputy Chief Administrative Patent Judge, a

[[Page 49815]]

Vice Chief Administrative Patent Judge, a Senior Lead Administrative
Patent Judge, a Lead Administrative Patent Judge, including individuals
who serve in these positions in an acting capacity, or any other
Administrative Patent Judge who, as part of their duties, serves as the
rating official of one or more Administrative Patent Judges.
Office means the United States Patent and Trademark Office.
Panel means the members of the Board assigned to a particular
proceeding, or an aspect thereof.
Proceeding means an appeal or contested case under part 41 of this
chapter, or a proceeding under part 42 of this chapter.

Sec. 43.3 Limits on Director's and other individuals' involvement in
panel decisions.

(a) Prior to issuance of a decision by a panel, the Director,
Deputy Director, Commissioner for Patents, and Commissioner for
Trademarks shall not communicate, directly or through intermediaries,
with any member of the panel regarding the decision.
(b) The prohibition of paragraph (a) of this section shall not
apply to any individual in paragraph (a) who is a member of the panel.
When sitting as a member of a panel, the Director or other individual
listed in paragraph (a) is a coequal member of the panel and exercises
no review authority over the proceeding prior to the issuance of the
panel's decision on the merits.
(c) Nothing in this section shall prevent the Director or delegate
from communicating with a panel as to resource needs or the procedural
status of any proceeding pending before the Board.
(d) The Chief Administrative Patent Judge or delegates of the Chief
Administrative Patent Judge shall designate panels of the Board on
behalf of the Director. The Chief Administrative Patent Judge or
delegates of the Chief Administrative Patent Judge shall only panel or
repanel proceedings in accordance with public Board paneling guidance.
The Director may issue generally applicable paneling guidance to be
applied to proceedings before the Board. The Director shall not direct
or otherwise influence the paneling or repaneling of any specific
proceeding prior to issuance of the panel decision. When reviewing or
rehearing an issued panel decision, the Director may direct the
repaneling of the proceeding in a manner consistent with public Board
paneling guidance through an Order entered into the record.

Sec. 43.4 Limited pre-issuance management and Office involvement in
decisions.

(a) Except as requested pursuant to paragraph (b) of this section
or permitted under paragraph (d) or (e) of this section, prior to
issuance of a decision by the panel, no Management Judge or an officer
or employee of the Office external to the Board shall initiate
communication, directly or through intermediaries, with any member of a
panel regarding the decision.
(b) Any individual panel member may request that one or more
Management Judges or an officer or employee of the Office external to
the Board provide input on a decision prior to issuance. The choice to
request input is optional and solely within the discretion of an
individual panel member.
(c) It is within the sole discretion of the panel to adopt any
edits, suggestions, or feedback provided to the panel by a Management
Judge or an officer or employee of the Office external to the Board as
part of a review requested under paragraph (b) of this section. The
panel has final authority and responsibility for the content of a
decision and determines whether and how to incorporate any feedback
requested under paragraph (b).
(d) The prohibition of paragraph (a) of this section shall not
apply to any Management Judge who is a member of the panel. When
sitting as a member of a panel, a Management Judge is a coequal member
of the panel.
(e) Nothing in this section shall prevent a Management Judge from
communicating with a panel as to resource needs or the procedural
status of any case pending before the Board.

Sec. 43.5 Review of decisions by non-Management Judges.

If the Office establishes procedures governing the internal
circulation and review of decisions prior to issuance to one or more
designated members of the Board:
(a) No Management Judge or an officer or employee external to the
Board shall participate directly or indirectly in any such review and
the reviewing non-Management Judges shall not discuss the substance of
any circulated decision with a Management Judge prior to issuance of
the decision, except with a Management Judge who is a member of the
panel; and
(b) Any edits, suggestions, or feedback provided to the panel
pursuant to such circulation and review are optional and in the sole
discretion of the panel to accept. The panel has final authority and
responsibility for the content of a decision and determines whether and
how to incorporate any feedback provided.

Sec. 43.6 Controlling legal authority; no unwritten or non-public
binding policy or guidance.

Notwithstanding any other provision of this part, all decisions of
the Board are expected to comport with all applicable statutes,
regulations, binding case law, and written Office policy and guidance
applicable to Board proceedings. There shall be no unwritten Office or
Board policy or guidance that is binding on any panel of the Board. All
written policy and guidance binding on panels of the Board shall be
made public.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2024-12823 Filed 6-11-24; 8:45 am]
BILLING CODE 3510-16-P