USPTO Proposes Pilot Program Where a Single APJ Would Make the IPR Institution Decision | Practical Law

USPTO Proposes Pilot Program Where a Single APJ Would Make the IPR Institution Decision | Practical Law

The US Patent and Trademark Office (USPTO) has announced a proposed pilot program under which a single Administrative Patent Judge (APJ) would decide whether to institute an inter partes review proceeding with two other APJs assigned to the proceeding if it is instituted. The USPTO is requesting comments on the proposed pilot program.

USPTO Proposes Pilot Program Where a Single APJ Would Make the IPR Institution Decision

by Practical Law Intellectual Property & Technology
Published on 24 Aug 2015 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) has announced a proposed pilot program under which a single Administrative Patent Judge (APJ) would decide whether to institute an inter partes review proceeding with two other APJs assigned to the proceeding if it is instituted. The USPTO is requesting comments on the proposed pilot program.
On August 25, 2015, the USPTO published a notice announcing a proposed pilot program under which a single Administrative Patent Judge (APJ) would decide whether to institute an inter partes review (IPR) (80 Fed. Reg. 51540-01 (August 25, 2015)). If an IPR is instituted, two additional APJs would preside over the IPR along with the APJ making the institution decision.
The USPTO would select certain petitions for inclusion in the proposed pilot program for at least three and up to six months. After considering the results of the proposed pilot program, the USPTO would determine whether and to what degree to implement this approach in the future.
The USPTO seeks public comments on any issue relevant to the design and implementation of the pilot program, including:
  • Whether the USPTO should conduct the single APJ institution pilot program.
  • The advantages and disadvantages of such a program.
  • How the USPTO should handle requests for rehearing on an institution decision made by a single APJ.
  • What information the USPTO should include in reporting the outcome of the proposed pilot program.
  • General suggestions for conserving and making efficient use of the judicial resources at the PTAB.
Interested parties may provide written comments by October 26, 2015 by e-mailing [email protected].