USPTO Proposes a Pilot Program to Allow a Single APJ to Institute an Inter Partes Review

The United States Patent and Trademark Office  (“USPTO”) has published a request for comments in the Federal Register for a proposed pilot program which would allow for a single Administrative Patent Judge (APJ) to determine whether to institute an inter partes review (IPR), with two additional APJs being assigned to the IPR if a trial were instituted.

In its proposal, the USPTO explains that since the 2012 enactment of America Invents Act for post-grant proceedings, “over 3600 petitions have been filed, and over 1,500 trials have been instituted.” Furthermore, “[t]he USPTO has thus far been able to meet the demands placed on its resources created by the unexpectedly heavy workload;” however, it now “believes [that] it is prudent to explore other potentially more efficient options [to review IPR petitions], especially given that the number of petitions filed may continue to increase.”

Current rules require a panel of three APJs to decide whether to institute a petition for review by the Patent Trials and Appeal Board (“PTAB”). Then, the same panel normally conducts the trial, if instituted. The proposed pilot program would allow for a single APJ to authorize instituting an IPR. The USPTO explains, “[h]aving a single judge decide whether to institute trial in a post grant proceeding, … would allow more judges to be available to attend to other matters, such as reducing the ex parte appeal backlog and handling more post grant proceedings.”

If permanently adopted, this program could reduce the overall workload and increase the efficiency of the PTAB. On the other hand, the program would place considerable unappealable “authority” in the hands of one APJ. One might question if efficiency alone should drive the PTAB process.

Gibbons P.C. will continue to monitor further developments with this proposed pilot program.

George W. Johnston is Counsel in the Gibbons Intellectual Property Department.
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