By Tom Ritchie and Dave Cochran

On November 16, 2017, the PTAB announced its revised Standard Operating Procedure for decisions remanded from the Federal Circuit for further proceedings.  In SOP 9, the PTAB provides guidance to panels and parties that facilitates its goal of issuing decisions in remand cases within six months of the Federal Circuit’s mandate.

Panels are expected to meet with the Chief Administrative Patent Judge and the Deputy Chief Administrative Patent Judge within thirty days of the Federal Circuit’s decision, before the mandate has even issued.  The focus of this meeting will depend on the facts and circumstances of the case, but may include topics relating to the procedural history, issues on remand, procedures for the proceedings on remand, and any possible policy considerations.

Parties in remanded trial cases are directed to contact the PTAB within 10 business days after the Federal Circuit’s mandate issues to schedule a teleconference with the panel.  The teleconference should be held within a month of the mandate.  Although the panel will ultimately decide the procedures for the remand proceeding, the parties must meet and confer before the teleconference in a good faith attempt to propose remand procedures to the panel.  For common remand scenarios, default trial procedures and examples from recent cases are provided as guidance on whether the panel is likely to permit additional briefing, additional evidence, or additional oral argument in the remand proceeding.

The PTAB acknowledges that certain scenarios may require an extension of their six-month goal for issuing a remand decision.

For further details, SOP 9 is available on the USPTO web site.

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For more than 25 years Dave has provided clients with a full range of patent legal services, including as lead counsel in more than 50 post-grant trials at the Patent Trial and Appeal Board of the United States Patent Office. Dave was part of the three-lawyer Jones Day team that prevailed at the Supreme Court in SAS Institute, Inc. v. Iancu, fundamentally changing PTAB litigation practice at the United States Patent Office.