By: Margaux A. Savee
This past year, we have seen the Patent Trial and Appeal Board (PTAB) designate a number of decisions as precedential and informative more so than in past years. This is directly a result of the USPTO’s revised Standard Operating Procedure 2 (SOP2). On September 20, 2018, the USPTO announced that Board decisions can now be designated as precedential or informative through either one of two tracks: (1) POP Review or (2) a “ratification” process.
Under both tracks, a newly formed Precedential Opinion Panel (POP) comprising of at least three members will decide whether the decision should be designated as precedential or informative. Members of the POP will be selected by the Director and, by default, will comprise the Director, the Commissioner of Patents and the Chief Judge. The three members of the POP may each decide to delegate their authority in certain circumstances.
POP Review under the first track is a rehearing of an issue in a pending trial. A party to a proceeding or any other member of the Board may recommend POP review—or a rehearing—of a particular Board decision. The request for POP review should be limited to situations where the Board decides issues of exceptional importance involving policy or procedure. A screening committee will review the recommendations and forward its recommendations to the Director. The Director will then convene with the POP to decide whether to grant rehearing, and if rehearing is granted, to render a decision on rehearing of the case.
If POP review is ordered, the Order will identify the issues the POP intends to resolve, may request additional briefing from the parties and, in some cases, may authorize amicus briefs. The POP may also order, at its discretion, an oral hearing. The decision resulting from POP Review will then be designated precedential, informative, or “routine.”
At this time, only two decisions have been issued by the newly formed POP:
Proppant Express Investments, LLC v. Oren Techs., LLC, Case IPR2018-00914, Paper 38 (Mar. 13, 2019) (designated: Mar. 13, 2019)
GoPro, Inc. v. 360Heros, Inc., Case IPR2018-01754, Paper 38 (Aug. 23, 2019) (designated: Aug. 23, 2019)
Please see my latest blog post on the GoPro decision regarding the one-year time bar under 35 U.S.C. § 315(b).
To request POP review, a party to the proceeding must submit a request by email to Precedential_Opinion_Panel_Request@uspto.gov. The email must identify with particularity the reasons for recommending POP review along with a request for rehearing filed with the Board under 37 C.F.R. § 41.52(a) or 42.71(d). In addition, counsel must also include a statement that the Board’s decision for which rehearing is requested was contrary to law or is a question of exceptional importance.
Under the second track, the public may nominate already issued decisions to be designated precedential or informative. Under this track, the Board is relying on the public to recognize which decisions are valuable to post-grant practice. This is the more traditional path for which a decision may be designated as precedential or informative. In this past year, there have been more than a dozen decisions that have been designated as precedential or informative through this ratification process. As above, a screening committee will review the recommendations and the Director will then convene with the POP to decide whether to designate the decision as precedential or informative.
Nominations should be submitted by email to PTAB_Decision_Nomination@uspto.gov and must set forth with particularity the reasons for the requested designation.
To learn more about the process under either track described above, I recommend reviewing the revised Standard Operating Procedure 2 (SOP2) online which provides the detailed procedural requirements for nominating a decision as precedential or informative.