By Sue Gerber and Matt Johnson

On May 26, 2022, the Patent Office issued its “Interim Process for PTAB Decision Circulation And Internal PTAB Review”.  The Office issued the Process to explain its new procedures for circulating pre-issuance decisions, which were designed to promote open decision-making and reinforce that the panel’s adoption of any feedback from the process is optional.  The Process also makes clear that “the Director is not involved, pre-issuance, in directing or otherwise influencing any panel decisions.”

The new circulation procedure is “based on decision circulation processes used by the Federal Circuit,” and provides that certain categories of PTAB draft decisions are circulated, prior to issuance, to a pool of non-management peer judges, called “the Circulation Judge Pool.”  Draft decisions in at least the following categories will be circulated:  all AIA institution decisions; AIA final written decisions; AIA decisions on rehearing; decisions on remand from the Federal Circuit; inter partes reexamination appeal decisions; and certain categories of ex parte appeal, ex parte reexamination appeal, and reissue appeal decisions as designated by PTAB management.  Further, if the judges believe other opinions warrant circulation, they may, at their option, circulate other types of decisions for review.

The Circulation Judge Pool or CJP is made up of at least eight non-management PTAB judges, who collectively have technical/scientific backgrounds and legal experience representative of the PTAB judges as a whole.  Each decision is reviewed by at least two CJP judges.  Any PTAB judge may serve on the CJP, usually for a one-year term.  Final selections for the CJP are made by the PTAB Executive Management in consultation with the Lead Judges of the volunteers.  Volunteers are selected to achieve a balanced committee representing diverse technical backgrounds and professional experiences.  CJP members with a conflict of interest must recuse themselves from reviewing any affected decisions.

The Process explains that the goal of the CJP review is to provide helpful feedback on decisions prior to issuance.  For each reviewed decision, the CJP provides information regarding potential conflicts or inconsistencies with relevant authority or with other PTAB decisions, and it makes suggestions to improve readability and stylistic consistency.  Like the Federal Circuit’s process, the CJP has 10 days to review draft decisions, but unlike the Federal Circuit’s process, the CJP cannot hold a decision beyond the expiration of the review period.

Feedback from the CJP is optional.  The panel has final authority and responsibility for the content of a decision, and determines whether and how to incorporate feedback from the CJP.  Judges may express additional or dissenting views in concurring or dissenting opinions as they deem appropriate.  Judges may also consult the PTAB Executive Management and Lead Judges for feedback regarding a draft decision, and that feedback is also optional.

When a case has been remanded by the Federal Circuit, the panel must meet with the Chief Judge, Deputy Chief Judge and/or delegate to discuss the issues presented by the Federal Circuit and procedure for prepared remand decision.  A panel may satisfy this requirement by sending an email to the assigned delegate or Deputy Chief Judge.  If a remand meeting is conducted, any suggestions provided to the panel are optional.

In addition to providing feedback to the panel, the CJP provides feedback to Patent Office management.  It identifies notable draft decisions, such as those involving issues of first impression or Patent Office policy, to PTAB Executive Management, which may discuss those decisions after issuance with the Director and/or Director Review Advisory Committee for consideration for Director-initiated review, and with Screening Committee for consideration of review by the Precedential Opinion Panel.  The CJP also has periodic meetings with the PTAB Executive Management to discussion potentially conflicting panel decisions and areas of potential policy clarification.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.