[Federal Register Volume 88, Number 193 (Friday, October 6, 2023)]
[Proposed Rules]
[Pages 69578-69583]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-22218]
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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: Notice of proposed rulemaking.
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SUMMARY: The United States Patent and Trademark Office (``USPTO'' or
``Office'') proposes regulations to govern the pre-issuance circulation
and review of decisions within the Patent Trial and Appeal Board
(``PTAB'' or ``Board''). The Office proposes these provisions to refine
the current interim process in light of stakeholder feedback received
in response to a Request for Comments (RFC). This proposed rule
promotes the efficient delivery of reliable intellectual property
rights by promoting consistent, clear, and open decision-making
processes at the PTAB.
DATES: Comments must be received by December 5, 2023 to ensure
consideration.
ADDRESSES: Comments must be submitted through the Federal eRulemaking
Portal at www.regulations.gov. To submit comments via the portal, one
should enter docket number PTO-P-2023-0012 on the homepage and select
``search.'' The site will provide search results listing all documents
associated with this docket. Commenters can find a reference to this
notice and select the ``comment'' icon, complete the required fields,
and enter or attach their comments. Attachments to electronic comments
will be accepted in Adobe[supreg] portable document format (PDF) or
Microsoft Word[supreg] format. Because comments will be made available
for public inspection, information that the submitter does not desire
to make public, such as an address or phone number, should not be
included in the comments.
Visit the Federal eRulemaking Portal for additional instructions on
providing comments via the portal. If electronic submission of, or
access to, comments is not feasible due to a lack of access to a
computer and/or the internet, please contact the USPTO using the
contact information below for special instructions.
FOR FURTHER INFORMATION CONTACT: Melissa A. Haapala, Vice Chief
Administrative Patent Judge, or Stacy B. Margolies, Lead Administrative
Patent Judge, 571-272-9797.
SUPPLEMENTARY INFORMATION:
Executive Summary
Purpose: This proposed rule would codify processes and standards to
govern the internal pre-issuance circulation and review of decisions
within the PTAB.
Since May of 2022, the USPTO has been using an interim process for
PTAB decision circulation and internal PTAB review to promote
consistent, clear, and open decision-making processes at the USPTO. 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 an RFC seeking public input on these processes. After reviewing
feedback received from the public in response to the RFC, the USPTO now
seeks to formalize its processes for circulation and review of
decisions within the PTAB through notice-and-comment rulemaking.
This proposed 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
employee of the Office external to the Board, nor any member of PTAB
management, is involved, directly or indirectly, in panel decision-
making unless a panel member has requested their input. The adoption of
any feedback received by the panel is entirely optional and solely
within the discretion of the panel.
This proposed rule also sets forth that, 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, no
management judge shall participate in any such review, either directly
or indirectly. The adoption of any feedback received pursuant to such
review is entirely optional and solely within the discretion of the
panel.
Finally, this proposed rule provides that decisions of the Board
are expected to comport with applicable statutes, regulations, binding
case law, and written agency or Board policy or guidance, and that
there is no unwritten agency or Board policy or guidance that is
binding on any panel of the Board.
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). 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, covered business method (CBM) patent
reviews,\1\ and derivation proceedings, in panels of at least three
members. 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
[[Page 69579]]
Judge of the Board. See PTAB Standard Operating Procedure 1 (SOP1),
Assignment of Judges to Panels, https://www.uspto.gov/sites/default/files/documents/SOP%201%20R15%20FINAL.pdf.
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\1\ Under section 18 of the AIA, the transitional program for
post-grant review of CBM patents sunset on September 16, 2020. AIA
18(a). Although the program has sunset, existing CBM proceedings,
based on petitions filed before September 16, 2020, remain pending
on appeal at the Federal Circuit Court of Appeals.
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Interim Process 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. Since May 2022, the USPTO has been using 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 has now been
replaced by a new Standard Operating Procedure (SOP4), issued
concurrently with this Notice of Proposed Rulemaking. The process set
forth in SOP4 is 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 a pool of non-management
APJs (the Circulation Judge Pool, also known as CJP) prior to issuance.
These decisions included all AIA institution decisions; AIA final
written decisions; AIA decisions on rehearing; inter partes
reexamination appeal decisions; designated categories of ex parte
appeal, ex parte reexamination appeal, and reissue appeal decisions;
and all Board decisions (including AIA and ex parte appeal decisions)
following a remand from the Federal Circuit. Judges could, at their
option, circulate other types of decisions for CJP review. In response
to stakeholder feedback, under the process set forth in SOP4,
circulation to CJP is now optional.
The CJP comprises a representative group of non-management APJs who
collectively have technical/scientific backgrounds and legal experience
representative of the PTAB judges as a whole. The CJP was 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); and United States Court of Appeals for the
Federal Circuit, Internal Operating Procedures, 10.5 (Mar. 1, 2022),
available at https://cafc.uscourts.gov/wp-content/uploads/RulesProceduresAndForms/InternalOperatingProcedures/IOPs-03012022.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 agency or Board policies or 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
are required to apply pertinent statutes, binding case law, and written
policy or guidance issued by the Director or the Director's delegate
that is applicable to PTAB proceedings. All policies or 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 issues or
issued decisions that have issued 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
(on the Director's own initiative) Director Review of a decision.
Under the interim process, any panel member, at their sole
discretion, could also optionally consult with one or more members of
PTAB management (i.e., PTAB Executive Management and Lead Judges)
regarding a decision prior to issuance. If consulted, PTAB management
could provide information regarding the consistent application of USPTO
policy, applicable statutes and regulations, and binding case law.
Adoption of any suggestions provided by PTAB management based on such
consultation was optional. Unless consulted by a panel member, PTAB
management did not make suggestions to the panel regarding the
substance of any pre-issuance decision, either directly or indirectly
through the CJP.
The interim PTAB decision circulation and internal review processes
promoted decisional consistency and open decision-making processes by
reinforcing that the adoption of all CJP and requested PTAB management
feedback is optional, that members of PTAB management did 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 had
the final authority and responsibility for the content of a decision.
Additionally, the processes provided a mechanism by which the Director
could be made aware of decisions to consider for sua sponte Director
Review, and of areas to consider for issuing new, or modified, USPTO
policy to promote the efficient delivery of reliable intellectual
property rights.
Furthermore, under both the interim process and SOP4, all
consultations are covered by conflict of interest policies. If a member
of the CJP or 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
On July 20, 2022, the USPTO issued an RFC on Director Review,
Precedential Opinion Panel Review, and Internal Circulation and Review
of Patent Trial and Appeal Board Decisions (RFC), to obtain public
feedback on the interim PTAB decision circulation and internal review
processes. See 87 FR 43249-52. 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 process) and question 14
(which asked what other considerations should be taken into
[[Page 69580]]
account with respect to the interim PTAB decision circulation and
internal review process).
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 representative 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 Provisions Governing Pre-Issuance Internal Circulation and
Review
In view of the comments and the USPTO's further experience with AIA
proceedings, the USPTO undertakes this rulemaking to make policy
changes to the processes and standards that govern the internal pre-
issuance circulation and review of decisions within the PTAB. This
rulemaking is consistent with comments received from stakeholders
expressing a preference that key policy changes be made and formalized
through rulemaking. This proposed rule seeks to promote consistent,
clear, and open decision-making processes while protecting judicial
independence and increasing transparency of USPTO processes. For
example, this proposed rule would prohibit PTAB management review of
decisions prior to issuance by the panel (absent a request by a panel
member, at the panel member's sole discretion). The proposed rule also
provides that, if the Office establishes procedures governing the
internal circulation and review of decisions prior to issuance (such as
CJP review), no management judge shall participate directly or
indirectly in any such review. Adopting the suggestion of stakeholders,
this proposed rule further specifies that the group of reviewing non-
management judges (e.g., CJP members) would be prohibited from
discussing any reviewed decision with PTAB management prior to
issuance.
In response to public feedback requesting additional information on
the processes, the USPTO has provided further details regarding the
internal circulation process and the structure of the reviewing body of
non-management judges (currently embodied by the CJP) by issuing a
Standard Operating Procedure (SOP4) concurrently with the publication
of this NPRM. The processes set forth in the SOP4 replace the former
interim process for PTAB decision circulation described above. The
Office may consider further refinements or modifications to the SOP4 in
view of the comments received from the public in response to this NPRM.
The USPTO proposes to add part 43, which provides for new
regulations governing the pre-issuance circulation and review of
decisions within the PTAB. A section-by-section discussion of the new
provisions is as follows:
Section 43.1: Proposed Sec. 43.1 would set forth general policy
considerations for Part 43 and define the scope of the rules.
Section 43.2: Proposed Sec. 43.2 would set forth definitions for
terms used in Part 43.
The proposed definition of Board would refer to the Patent Trial
and Appeal Board.
The proposed definition of decision would refer to any decision,
order, opinion, or other written work product intended for entry into
the record of a Board proceeding.
The proposed definition of Director would refer to 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.
The proposed definition of Deputy Director would refer to 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.
The proposed definitions of Commissioner for Patents and
Commissioner for Trademarks would be the positions defined in 35 U.S.C.
3(b)(2) or an individual acting in the capacity of one of those
positions.
The proposed definition of issuance would refer to the entry of a
decision into the record of a Board proceeding.
The proposed definition of Management Judge would encompass the
Chief Administrative Patent Judge, the Deputy Chief Administrative
Patent Judge, a Vice Chief Administrative Patent Judge, a Senior Lead
Administrative Patent Judge, and/or a Lead Administrative Patent Judge,
including individuals who serve in these positions in an acting
capacity. The definition is also intended to capture any other
Administrative Patent Judge who, as part of their duties, supervises
the work of other Administrative Patent Judges or is responsible for
reviewing the performance of other Administrative Patent Judges.
The proposed definition of panel would refer to the members of the
Board assigned to a proceeding pursuant to the Board's Standard
Operating Procedure 1.
The proposed definition of proceeding would refer to an appeal or
contested case under Part 41 or trial proceeding under Part 42.
Section 43.3: Proposed Sec. 43.3 would specify that the Director
of the USPTO and other high-level officers are not involved in panel
decisions prior to their issuance, either directly or indirectly. The
provision ensures the judicial independence of Board panels by
insulating panel decision-making from the policy-setting functions of
Office leadership.
Proposed Sec. 43.3(a) would 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.
Proposed Sec. 43.3(b) would provide that paragraph (a) would not
apply to any proceeding in which the named individual is a member of
the panel and would also specify that when sitting as a member of a
panel, the individual is a coequal member of the panel.
Proposed Sec. 43.3(c) would 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 is intended to permit 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 would not be permitted under
this provision.
Proposed Sec. 43.3(d) would specifically delegate to the Chief
Administrative Patent Judge the Director's power to designate and re-
designate panels of the Board under 35 U.S.C. 6(c). The proposed rule
would also prohibit the Director from directing or otherwise
influencing the paneling or repaneling of any proceeding prior to
issuance of the panel decision. The proposed rule permits the Director
to issue generally applicable paneling guidance to be applied to
proceedings before the Board,
[[Page 69581]]
and to direct the repaneling of a proceeding according to that
generally applicable guidance when the Director is reviewing or
rehearing an issued panel decision.
Section 43.4: Proposed Sec. 43.4 would govern involvement by Board
management or Office employees outside 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 management input on issues when desired.
Proposed Sec. 43.4(a) would prohibit any Management Judge or
employee of the Office external to the Board from initiating
communication, directly or through intermediaries, with any member of a
panel regarding a decision, prior to issuance of that decision.
Proposed Sec. 43.4(b) would provide an exception to paragraph (a)
in the event a member of the panel requests input from a Management
Judge prior to issuance of the decision. The proposed rule clarifies
that requesting input is optional and the decision to request input is
solely within the discretion of an individual panel member.
Proposed Sec. 43.4(c) would specify that it is within the panel's
sole discretion to adopt any edits, suggestions, or feedback provided
by a Management Judge in response to a request for input, and the panel
has the final authority and responsibility for the content of a
decision.
Proposed Sec. 43.4(d) would provide that paragraph (a) would not
apply to a Management Judge who is a member of the panel and would
specify that when sitting as a member of a panel, a Management Judge is
a coequal member of the panel and exercises no review authority over
the decision.
Proposed Sec. 43.4(e) would 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 is intended to permit 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 would not be permitted under
this provision.
Section 43.5: Proposed Sec. 43.5 would govern procedures for
circulation of decisions to, and review of decisions by, a designated
group of non-Management Judges if the Office sets forth 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.
Proposed Sec. 43.5(a) would provide that no Management Judge shall
participate in any such circulation and review procedures. The proposed
rule further provides that if a decision is circulated to 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.
Proposed Sec. 43.5(b) would specify that any edits, suggestions,
or feedback provided, following circulation and review to a non-
Management Judge, are optional and in the sole discretion of a panel to
accept. The proposed rule also states that the panel has final
authority and responsibility for the content of a decision and
determines whether and how to incorporate any feedback provided.
Section 43.6: Proposed Sec. 43.6 would provide that all decisions
of the Board are expected to comport with all applicable statutes,
regulations, binding case law, and written agency policy or guidance
applicable to Board proceedings. This proposed provision would also
specifically state that there is no unwritten agency or Board policy or
guidance that is binding on any panel of the Board. The proposed
provision would further require that all written policy or guidance
binding on panels of the Board shall be made public.
Rulemaking Considerations
A. Administrative Procedure Act: The changes proposed by 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)).
The Office, nevertheless, is publishing this proposed rule for
comment to seek the benefit of the public's views on the Office's
proposed changes as set forth herein.
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 changes set forth in this notice of proposed rulemaking would not
have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b).
The changes in this notice of proposed rulemaking are to set 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
these proposed changes are of minimal or no additional burden to those
practicing before the Board.
For the foregoing reasons, the proposed changes in this notice of
proposed rulemaking would 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 (Sept. 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 (Jan. 18,
2011). Specifically, 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
[[Page 69582]]
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 scientific
and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 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 (Nov. 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 (Feb. 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 (Apr.
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 (Mar. 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.), prior to issuing any final rule, 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 notice of proposed
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 notice of proposed 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 proposed 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.
For the reasons set forth in the preamble, the USPTO proposes to
amend title 37 as follows:
0
1. Add part 43 to read as follows:
PART 43-- DECISION CIRCULATION AND REVIEW WITHIN THE PATENT TRIAL
AND APPEAL BOARD
Sec.
43.1 Policy.
43.2 Definitions.
43.3 No Pre-Issuance Director Involvement in Board Decisions.
43.4 Limited Pre-Issuance Management 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; Pub. L. 112-29, 125 Stat. 284; and Pub. L. 112-274, 126 Stat.
2456.
Sec. 43.1 Policy.
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.
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.
[[Page 69583]]
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.
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 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, supervises the work of other
Administrative Patent Judges or is responsible for reviewing the
performance of other Administrative Patent Judges.
Panel means the members of the Board assigned to a proceeding
pursuant to the Board's Standard Operating Procedure 1.
Proceeding means an appeal or contested case under Part 41, or
trial proceeding under Part 42.
Sec. 43.3 No Pre-Issuance Director Involvement in Panel Decisions.
(a) Prior to issuance of a decision by the 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) shall not apply to any
proceeding in which the individual 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 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 PTAB paneling guidance, through an Order entered into
the record.
Sec. 43.4 Limited Pre-Issuance Management Involvement in Decisions.
(a) Except as requested pursuant to paragraph (b) or permitted
under paragraph (d) or (e), prior to issuance of a decision by the
panel, no Management Judge or employee of the Office external to the
Board shall initiate communication, directly or through intermediaries,
with any member of a panel regarding a decision.
(b) Any individual panel member may request that one or more
Management Judges 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 as part of a review requested under paragraph (b). 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) 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 and
exercises no review authority over the proceeding prior to the issuance
of the panel's decision on the merits.
(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 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 agency policy and guidance
applicable to Board proceedings. There shall be no unwritten agency 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. 2023-22218 Filed 10-5-23; 8:45 am]
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