Thursday, October 22, 2020
On October 20, 2020, the PTO printed within the Federal Register a request for feedback about whether or not it ought to embark on a proper notice-and-comment rulemaking course of directed to how the PTAB workouts its discretion in deciding whether or not to institute an AIA trial. 85 FR 66502.
“The USA Patent and Trademark Workplace (Workplace or USPTO) seeks public feedback on issues for instituting trials earlier than the Workplace below the Leahy-Smith America Invents Act (AIA). The USPTO is contemplating the codification of its present insurance policies and practices, or the modification thereof, by way of rulemaking and desires to collect public feedback on the Workplace’s present method and on numerous different approaches recommended to the Workplace by stakeholders.”
In different phrases, as an alternative of counting on precedential and informative Board selections to information its discretion, the PTO is evaluating whether or not it should undergo the usual, formal means of promulgating its guidelines – publish proposed guidelines, obtain/consider/reply to public feedback, and concern ultimate guidelines. Whereas there isn’t any statute expressly directed to the Board’s discretion, the discover identifies a number of statutory sections which it depends on for the authority to prescribe guidelines guiding the Board’s discretion. “Below 35 U.S.C. 316(a) and 326(a), the Director shall prescribe rules for sure enumerated facets of AIA proceedings, and below 35 U.S.C. 2(b)(2)(A), the Director might set up rules that ‘shall govern the conduct of proceedings within the Workplace.’”
To information the general public in offering feedback, the PTO has set out seven particular questions organized in 4 broad classes:
Serial Petitions
1. Ought to the Workplace promulgate a rule with a case-specific evaluation, corresponding to typically outlined in Basic Plastic, Valve I, Valve II and their progeny, for deciding whether or not to institute a petition on claims which have beforehand been challenged in one other petition?
2. Alternatively, in deciding whether or not to institute a petition, ought to the Workplace (a) altogether disregard whether or not the claims have beforehand been challenged in one other petition, or (b) altogether decline to institute if the claims have beforehand been challenged in one other petition?
Parallel Petitions
3. Ought to the Workplace promulgate a rule with a case-specific evaluation, corresponding to typically outlined within the Consolidated Trial Observe Information, for deciding whether or not to institute multiple petition filed at or about the identical time on the identical patent?
4. Alternatively, in deciding whether or not to institute multiple petition filed at or about the identical time on the identical patent, ought to the Workplace (a) altogether disregard the variety of petitions filed, or (b) altogether decline to institute on multiple petition?
Proceedings in Different Tribunals
5. Ought to the Workplace promulgate a rule with a case-specific evaluation, corresponding to typically outlined in Fintiv and its progeny, for deciding whether or not to institute a petition on a patent that’s or has been topic to different proceedings in a U.S. district courtroom or the ITC?
6. Alternatively, in deciding whether or not to institute a petition on a patent that’s or has been topic to different proceedings in district courtroom or the ITC, ought to the Workplace (a) altogether disregard such different proceedings, or (b) altogether decline to institute if the patent that’s or has been topic to such different proceedings, until the district courtroom or the ITC has indicated that it’s going to keep the motion?
Different Issues
7. Whether or not or not the Workplace promulgates guidelines on these points, are there some other modifications the Workplace ought to make in its method to serial and parallel AIA petitions, proceedings in different tribunals, or different use of discretion in deciding whether or not to institute an AIA trial?
Feedback should be in writing and are due by November 19, 2020.
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