USPTO advances rules governing PTAB review practices in various proceedings, improving fairness, transparency, and efficiency

In light of robust, extensive feedback from a wide array of stakeholders and the Patent Trial and Appeal Board’s (PTAB) experience in implementing the America Invents Act (AIA) for over a decade, today the U.S. Patent and Trademark Office (USPTO) announced a Notice of Proposed Rulemaking (NPRM) seeking public input on proposals to codify many existing PTAB review policies and practices. These proposals would improve fairness, transparency, and efficiency in PTAB processes, further evolving and strengthening the proceedings of USPTO’s patents judicial Board. 

The proposals in the NPRM reflect public feedback starting with a 2020 Request for Comments that received more than 820 comments and a 2023 Advanced Notice of Proposed Rulemaking (ANPRM) that resulted in 14,500 comments, as well as comments received in other fora, expressing a preference that key policy changes be formalized through rulemaking. The proposed rules address a subset of topics from the ANPRM; other topics raised in the ANPRM are still under consideration. 

“The patent system works most efficiently and effectively when the USPTO issues and maintains robust and reliable patents upon which patent owners and the public can rely to invest in innovations and bring them to market, to commercialize ideas, to engage in technology transfer and licensing, and to enforce patent rights,” said Under Secretary of Commerce and Director of the USPTO Kathi Vidal. “This NPRM is an important step towards ensuring an efficient and streamlined patent system that will strengthen patent quality while limiting counterproductive challenges and costs. We are grateful to all stakeholders who have provided their input as part of this important collaborative process and welcome feedback on the proposals we issue today.”

The proposed rules would enhance and build on existing precedent and guidance regarding exercise of the Director’s discretion to determine whether to institute an AIA proceeding with regard to serial petitions, parallel petitions, and petitions implicating the same or substantially the same art or arguments previously presented to the USPTO. The proposed rules would also establish a separate briefing process for discretionary institution arguments and align the procedures for termination of proceedings pre- and post-institution. 

The deadline to comment is June 18, 2024. All comments must be submitted in writing through the Federal eRulemaking Portal at www.regulations.gov.