PTAB Discretion to Institute Trials: PTO seeks comments whether to propose rules

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On October 20, 2020, the PTO published in the Federal Register a request for comments about whether it should embark on a formal notice-and-comment rulemaking process directed to how the PTAB exercises its discretion in deciding whether to institute an AIA trial.  85 FR 66502.

“The United States Patent and Trademark Office (Office or USPTO) seeks public comments on considerations for instituting trials before the Office under the Leahy-Smith America Invents Act (AIA). The USPTO is considering the codification of its current policies and practices, or the modification thereof, through rulemaking and wishes to gather public comments on the Office's current approach and on various other approaches suggested to the Office by stakeholders.”

In other words, instead of relying on precedential and informative Board decisions to guide its discretion, the PTO is evaluating whether it ought to go through the standard, formal process of promulgating its rules – publish proposed rules, receive/evaluate/respond to public comments, and issue final rules.  While there is no statute expressly directed to the Board’s discretion, the notice identifies several statutory sections which it relies on for the authority to prescribe rules guiding the Board’s discretion.  “Under 35 U.S.C. 316(a) and 326(a), the Director shall prescribe regulations for certain enumerated aspects of AIA proceedings, and under 35 U.S.C. 2(b)(2)(A), the Director may establish regulations that ‘shall govern the conduct of proceedings in the Office.’”

To guide the public in providing comments, the PTO has set out seven specific questions organized in four broad categories:

Serial Petitions 

1. Should the Office promulgate a rule with a case-specific analysis, such as generally outlined in General Plastic, Valve I, Valve II and their progeny, for deciding whether to institute a petition on claims that have previously been challenged in another petition? 

2. Alternatively, in deciding whether to institute a petition, should the Office (a) altogether disregard whether the claims have previously been challenged in another petition, or (b) altogether decline to institute if the claims have previously been challenged in another petition? 

Parallel Petitions 

3. Should the Office promulgate a rule with a case-specific analysis, such as generally outlined in the Consolidated Trial Practice Guide, for deciding whether to institute more than one petition filed at or about the same time on the same patent? 

4. Alternatively, in deciding whether to institute more than one petition filed at or about the same time on the same patent, should the Office (a) altogether disregard the number of petitions filed, or (b) altogether decline to institute on more than one petition? 

Proceedings in Other Tribunals 

5. Should the Office promulgate a rule with a case-specific analysis, such as generally outlined in Fintiv and its progeny, for deciding whether to institute a petition on a patent that is or has been subject to other proceedings in a U.S. district court or the ITC? 

6. Alternatively, in deciding whether to institute a petition on a patent that is or has been subject to other proceedings in district court or the ITC, should the Office (a) altogether disregard such other proceedings, or (b) altogether decline to institute if the patent that is or has been subject to such other proceedings, unless the district court or the ITC has indicated that it will stay the action? 

Other Considerations 

7. Whether or not the Office promulgates rules on these issues, are there any other modifications the Office should make in its approach to serial and parallel AIA petitions, proceedings in other tribunals, or other use of discretion in deciding whether to institute an AIA trial? 

Comments must be in writing and are due by November 19, 2020.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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