Recently the USPTO Patent Trial and Appeal Board (PTAB) revised several of its Standard Operating Procedures (SOPs), including PTAB SOP 1 which relates to how Administrative Patent Judges (APJs) are assigned to cases. SOP 1 also explains why a panel might change, and the limited use of expanded panels.
PTAB SOP 1 – Assigning APJs
Revised PTAP SOP 1 outlines a hierarchy of considerations behind how APJs are assigned to cases. These include, in general order of importance:
- Avoiding conflicts of interest
- The preference of an APJ for ex parte appeals vs. other cases
- Maintaining workflow/workload
- Assigning cases to APJs with a relevant technical background
Consideration also is given to impaneling newer APJs with more experienced APJs, and assigning related cases to the same or overlapping panels.
Because I often request an oral hearing, I was interested to see the additional considerations for cases with oral hearings:
- Unless the needs of the PTAB require otherwise, ex parte appeals with hearings will be assigned to APJs who are paneled on ex parte appeals only.
- At least two APJs serving in Alexandria or a regional office should be assigned to an ex parte appeal with a hearing. (The two judges need not serve in the same office.)
- APJs from different technology clusters may be assigned to accommodate a heard ex parte appeal conducted outside of the Alexandria office.
PTAB SOP 1 – Panel Changes
New to revised SOP 1 is more transparency on panel changes. SOP 1 explains three categories of reasons for panel changes:
- recusal due to conflict
- unavailability of an APJ (e.g., leave)
- a need to meet PTAB deadlines
If the panel already has appeared in a case, the parties will be notified of a panel change by a Panel Change Order that will identify the new panel and give the category of reason for the panel change (“recusal,” “unavailability,” or “deadlines”).
PTAB SOP 1 – Expanded Panels
Revised SOP 1 also discusses expanded panels, which “may be used, where appropriate, to secure and maintain uniformity of the Board’s decisions, , in related cases ordinarily involving different three judge panels.” As noted in SOP 1, the use of expanded panels to “establish binding agency authority concerning major policy or procedural issues, or other issues of exceptional importance, are generally expected to be addressed using the [new Precedential Opinion Panel] procedures set forth in Standard Operating Procedure 2.”
An expanded panel can be requested by any Board member (including a statutory Board member), or Patent Business Unit, or requested by a party in a briefing paper. All requests for an expanded panel must be recommended by the Chief Judge and approved by the Director.
When an expanded panel is designated after a case has been assigned to a panel but before a decision is entered, the original APJs usually will be on the expanded panel. If an expanded panel is designated after entry of a panel decision in order to consider a request for rehearing, the original APJs usually will be on the expanded panel.
Peek Behind The Curtains
While most of SOP 1 explains current PTAB practices and procedures, it is interesting to have this “peek behind the curtain” and a better understanding of how APJs are assigned to cases.