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."
Read more about SOP 2 in this article on PTAB Trial Insights.
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.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.