PTO Gives Iancu More Control over PTAB Precedents

The primary change is the creation of a sort of PTAB appellate panel comprising Iancu, Commissioner of Patents Drew Hirshfeld, and the PTAB's chief judge, a position that's currently vacant. Those three or their designees will have the authority to make PTAB panel decisions precedential, or to reconsider panel decisions and issue their own precedential opinions.

Scott McKeown, the chairman of Ropes & Gray's PTAB group, said the Precedential Opinion Panel solves several problems. One is that the PTAB wasn't issuing enough precedent to help practitioners. The previous rules for designating a precedential opinion, which required a majority vote of the board, was drawn up when the PTAB numbered 30 or 40 administrative judges. Now at 250 judges thanks to the America Invents Act, the board could find agreement on only about five precedential opinions a year.

Second is that the strategy the board used to get around that problem — expanding the panels in important cases by adding judges from PTAB leadership — was highly unpopular.

Finally, the new procedures will defuse another nascent criticism: that PTAB judges are constitutional officers under the Supreme Court's Lucia v. SEC decision who should be subject to Senate confirmation. The new procedures “make it clear the political appointee is running the show, because that's the way it's supposed to work. That's the way other agencies work,” McKeown said. He cited the International Trade Commission, which reviews its ALJs' decisions, as an example.

Along with the Precedential Opinion Panel, the PTAB also issued detailed new procedures that spell out how judges are assigned or reassigned to cases, while making clear that “an expanded panel is not favored and ordinarily will not be used.”

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Scott Graham focuses on intellectual property and the U.S. Court of Appeals for the Federal Circuit. He writes ALM's Skilled in the Art IP briefing. Contact him at [email protected].