Citing an interest in improving efficiency, the USPTO published a request for comments on a proposed pilot program that would change the way Inter Partes Review petitions are decided.
Currently, a panel of three administrative patent judges (APJs) consider IPR petitions and determine whether to institute and conduct a trial. The trial is then conducted before the same panel of APJs, which issues a final written decision on the merits.
Under the proposed pilot program, a single APJ would decide whether to institute IPR. If instituted, the PTAB will assign two additional APJs to complete the panel required by statute to render a final decision. Alternatively, in certain circumstances, the PTAB may assign three new APJs to the proceeding, although the USPTO’s proposal suggests a preference for the instituting APJ to remain on the panel to manage the proceeding during trial.
Under the proposed pilot program, a single APJ would decide whether to institute IPR.
The PTAB has dealt with the increasing strain on resources by hiring more APJs; the number has increased from 170 in 2012 to 231 as of April 20, 2015. Patent Trial and Appeal Board Update, May 14, 2015. The PTAB proposes that an institution proceeding requiring only a single judge would free resources to devote to the increasing number of post-grant proceedings and reducing the ex parte appeal backlog.
A procedure resting the decision to institute IPR with a single APJ raises many concerns. The recently proposed PTAB trial rule changes allow patent owners to include new testimonial evidence with their preliminary response. The proposed change would increase the burden now placed on a single APJ in issuing a decision within three months of the preliminary response. Further, petitioners and patentees alike seek consistency in institution decisions, which may suffer without the advantage of panel collaboration. Disparate decisions from single APJs may spur an increase in requests for reconsideration, adding to the PTAB’s already “unexpectedly heavy workload.” And, as institution decisions are generally not appealable to the Federal Circuit, patentees and petitioners are left with no option for judicial review of the decision.
The pilot program, as currently proposed, would last three to six months, and the USPTO would select IPR petitions for inclusion into the program. Petitioners or patentees may not voluntarily request participation in the program. Post Grant Review (PGR) and Covered Business Method (CBM) petitions are not eligible.
Written comments must be received by the USPTO on or before October 26, 2015, to be considered.