80 FR 51540 - Request for Comments on a Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office Federal Register Volume 80, Issue 164 (August 25, 2015)
United States Patent and Trademark Office
Federal Register Volume 80, Issue 164 (August 25, 2015)
| Page Range | 51540-51542 | |
| FR Document | 2015-21052 |
[Federal Register Volume 80, Number 164 (Tuesday, August 25, 2015)] [Notices] [Pages 51540-51542] From the Federal Register Online [www.thefederalregister.org] [FR Doc No: 2015-21052] ----------------------------------------------------------------------- DEPARTMENT OF COMMERCE United States Patent and Trademark Office [Docket No.: PTO-P-2015-0055] Request for Comments on a Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews AGENCY: United States Patent and Trademark Office, Commerce. ACTION: Request for comments. ----------------------------------------------------------------------- SUMMARY: The United States Patent and Trademark Office (USPTO) is requesting comments on a proposed pilot program pertaining to the institution and conduct of the post grant administrative trials provided for in the Leahy-Smith America Invents Act (AIA). The AIA provides for the following post grant administrative trials: Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method Review (CBM). The USPTO currently has a panel of three APJs decide whether to institute a trial, and then normally has the same three-APJ panel conduct the trial, if instituted. The USPTO is considering a pilot program under which the determination of whether to institute an IPR will be made by a single APJ, with two additional APJs being assigned to the IPR if a trial is instituted. Under this pilot program, any IPR trial will be conducted by a panel of three APJs, two of whom were not involved in the determination to institute the IPR. DATES: Comment Deadline Date: To be ensured of consideration, written comments must be received on or before October 26, 2015. ADDRESSES: Comments must be sent by electronic mail message over the Internet addressed to: [email protected]. Electronic comments submitted in plain text are preferred, but also may be submitted in ADOBE[supreg] portable document format or MICROSOFT WORD[supreg] format. The comments will be available for viewing via the USPTO's Internet Web site (http://www.uspto.gov). Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments. FOR FURTHER INFORMATION CONTACT: Scott R. Boalick, Vice Chief Administrative Patent Judge, Patent Trial and Appeal Board, by telephone at (571) 272-9797. SUPPLEMENTARY INFORMATION: Introduction: The first petitions for AIA post grant administrative trials were filed on September 16, 2012. Since then, over 3,600 petitions have been filed, and over 1,500 trials have been instituted. The USPTO has thus far been able to meet the demands placed on its resources created by the unexpectedly heavy workload. The Patent Trial and Appeal Board (PTAB) has issued over 2,200 decisions on institution and over 450 final written decisions. In three-plus years, the PTAB has not missed one statutory or regulatory deadline. At the same time, the PTAB has reduced the backlog of ex parte appeals. Notwithstanding the success-to-date, the USPTO is pro-actively looking for ways to enhance its operations for the benefit of its stakeholders and therefore is interested in exploring alternative approaches that might improve its efficiency in handling AIA post grant proceedings while being fair to both sides and continuing to provide high quality decisions. Based upon comments received from the public through public fora and formal requests, the agency is considering a pilot program to test changing how the institution phase of a post grant proceeding is handled. Once trial is instituted, the AIA mandates that the resulting trial be conducted before a three-member panel of the PTAB. Generally, under current practice, the same panel of three administrative patent judges (APJs) decides whether to institute and, if instituted, handles the remainder of the proceeding, much like how federal district court judges handle cases through motions to dismiss, summary [[Page 51541]] judgment, and trial. But a three-judge panel of the PTAB is not required under the statute prior to institution, and the USPTO believes it is prudent to explore other potentially more efficient options, especially given that the number of petitions filed may continue to increase. To date and currently, the agency has intended to meet the resource demands on the PTAB due to both AIA post grant proceedings and ex parte appeals by hiring additional judges. Even with continued hiring, however, increases in filings and the growing number of cases may strain the PTAB's continuing ability to make timely decisions and meet statutory deadlines. Therefore, the agency wishes to explore and gain data on a potentially more efficient alternative to the current three- judge institution model. Having a single judge decide whether to institute trial in a post grant proceeding, instead of a panel of three judges, 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. Background: As discussed previously, the AIA provides for IPR, PGR, and CBM trials, under which a petitioner may seek cancellation of one or more claims of a patent. The AIA provides that the Director decides whether to institute an IPR, PGR, or CBM trial. See 35 U.S.C. 314 and 324. An IPR is not instituted unless there is a determination that the petition demonstrates that there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable. See 35 U.S.C. 314(a). A PGR or CBM is not instituted unless there is a determination that the petition, if unrebutted, demonstrates that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. See 35 U.S.C. 324(a). Alternatively, a PGR or CBM may be instituted where the petition raises a novel or unsettled legal question that is important to other patents or patent applications. See 35 U.S.C. 324(b). Once instituted, and after a trial is conducted, the PTAB issues a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added during the review. See 35 U.S.C. 318 and 328. The final determination in an IPR, PGR, or CBM must, with limited exceptions, be issued not later than one year after the date on which the institution of the IPR, PGR, or CBM is noticed. See 35 U.S.C. 316(a)(11) and 326(a)(11); 37 CFR 42.100(c), 200(c), and 300(c). The authority to determine whether to institute and conduct a trial has been delegated to a Board member or employee acting with the authority of the Board. See 37 CFR 42.4; see also Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions, 77 FR 48612, 48647 (Aug. 14, 2012). As a result, neither the AIA nor the USPTO's rules require that an institution decision be made by a panel of multiple individuals within the USPTO. The AIA does, however, require that the final written decision in an IPR, PGR, or CBM be rendered by a panel of at least three APJs. See 35 U.S.C. 6(c). The PTAB has developed the practice of deciding whether to institute an IPR, PGR, or CBM trial via three-APJ panels, and then conducting the trial, if instituted, usually by the same three-APJ panel. Proposed Pilot Program: The USPTO is seeking input on whether to conduct a pilot program under which a single APJ would decide whether to institute an IPR trial, with two additional APJs being assigned to conduct the IPR trial, if instituted. Under this pilot program, any IPR trial will be conducted by a panel of three APJs, two of whom were not involved in the determination to institute the IPR. Conduct of Proposed Pilot Program: The USPTO is considering selecting certain petitions for inclusion in the proposed pilot program from among all IPR petitions filed during a specific period. The selection would continue for at least three and up to six months. The pilot program would be limited to IPRs. The USPTO would consider the results of this pilot program to determine whether and to what degree to implement this approach more generally in the future, for example, potentially only in response to an unusually high volume of petitions. Due to the inter partes nature of IPR trials and the need to avoid selection bias during the evaluation of the results, it is not practical to allow petitioners or patentees to request participation in, or exclusion from, the pilot program. Finally, it is possible that an IPR initially selected for the single-APJ pilot program will ultimately be determined unsuitable for inclusion in the pilot. In such a situation, the IPR would be removed from the proposed single-APJ pilot program. Assignment of Trial Panel under the Single-Judge Pilot Program: If the single-APJ decision results in institution of trial, the PTAB would, after institution, assign two additional APJs to the panel for rendering interlocutory decisions, as needed, and for issuing a final written decision on the merits. The PTAB may assign three new APJs to the panel, for example, in the rare circumstance that the APJ who granted the institution is not available to sit on the panel post institution or where, due to workloads, it would be more efficient to assign a new three-judge panel to the proceeding. When possible, the trial panel assignment would maintain the role of the single APJ as the judge generally managing the proceeding during trial. This would ensure that the judge most familiar with the IPR has the responsibility of coordinating interlocutory activity with the parties during trial. Scheduling Order: Typically, when trial is instituted, a scheduling order is entered concurrently with the decision on institution. To allow for coordination of deadlines and the trial panel's availability for oral argument and other due dates, the scheduling order in trials instituted pursuant to a decision under this pilot program will not be entered concurrently with the decision on institution. The PTAB expects that, after the trial panel is notified of the assignment, the panel will issue promptly a scheduling order for the IPR. Question for Public Comment: The USPTO is inviting written comments from any member of the public on the pilot program under consideration. Specifically, the USPTO is seeking comment on any issue relevant to the design and implementation of a pilot program under which an IPR trial is conducted by a panel of three APJs in which two of the APJs were not involved in the determination to institute the IPR. In particular, the USPTO is seeking public input on the following questions. Questions 1. Should the USPTO conduct the single-APJ institution pilot program as proposed herein to explore changes to the current panel assignment practice in determining whether to institute review in a post grant proceeding? 2. What are the advantages or disadvantages of the proposed single- APJ institution pilot program? 3. How should the USPTO handle a request for rehearing of a decision on whether to institute trial made by a single APJ? 4. What information should the USPTO include in reporting the outcome of the proposed single-APJ institution pilot program? 5. Are there any other suggestions for conservation and more efficient use of the judicial resources at the PTAB? [[Page 51542]] Dated: August 20, 2015. Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2015-21052 Filed 8-24-15; 8:45 am] BILLING CODE 3510-16-P
![51540 Federal Register / Vol. 80, No. 164 / Tuesday, August 25, 2015 / Notices
return to the research area to conduct during this project, beyond that of comments must be received on or before
more experimental tows. The temporary typical commercial scup trawl October 26, 2015.
exemption from the regulated size and operations. ADDRESSES: Comments must be sent by
possession limits would allow for scup, If approved, the applicant may electronic mail message over the
windowpane flounder, and various request minor modifications and Internet addressed to: PTABTrialPilot@
bycatch species to be onboard the vessel extensions to the EFP throughout the uspto.gov. Electronic comments
while sampling and weighing activities year. EFP modifications and extensions submitted in plain text are preferred,
are taking place prior to discard. may be granted without further notice if but also may be submitted in ADOBE®
The project will be conducted they are deemed essential to facilitate portable document format or
primarily during the fall months completion of the proposed research MICROSOFT WORD® format. The
(September-November), while both scup and have minimal impacts that do not comments will be available for viewing
and windowpane flounder reside change the scope or impact of the via the USPTO’s Internet Web site
predominately inshore, with the two initially approved EFP request. Any (http://www.uspto.gov). Because
species occurring together in high fishing activity conducted outside the comments will be made available for
numbers south of Long Island, NY, and scope of the exempted fishing activity public inspection, information that the
Nantucket, MA. However, trips may also would be prohibited. submitter does not desire to make
occur in the spring if more data or public, such as an address or phone
Authority: 16 U.S.C. 1801 et seq.
additional trips are needed. number, should not be included in the
The participating vessels would Dated: August 20, 2015.
comments.
conduct research fishing concurrently, Alan D. Risenhoover,
FOR FURTHER INFORMATION CONTACT:
orienting the vessels side-by-side, Director, Office of Sustainable Fisheries,
within a half mile of each other while National Marine Fisheries Service.
Scott R. Boalick, Vice Chief
fishing gear is deployed. The vessels Administrative Patent Judge, Patent
[FR Doc. 2015–21008 Filed 8–24–15; 8:45 am]
would be using typical scup trawl Trial and Appeal Board, by telephone at
BILLING CODE 3510–22–P
fishing methods and the participants (571) 272–9797.
would be members of the small mesh SUPPLEMENTARY INFORMATION:
scup trawl fleet, holding scup permits. DEPARTMENT OF COMMERCE Introduction: The first petitions for
To test the experimental gear, one vessel AIA post grant administrative trials
will have its scup net modified with the United States Patent and Trademark were filed on September 16, 2012. Since
large-mesh belly panel installed into the Office then, over 3,600 petitions have been
first belly of the net, the other vessel filed, and over 1,500 trials have been
will have the same scup net without the [Docket No.: PTO–P–2015–0055] instituted. The USPTO has thus far been
large-mesh belly panel added. The able to meet the demands placed on its
resulting catch data will identify the Request for Comments on a Proposed resources created by the unexpectedly
differences in catch between the Pilot Program Exploring an Alternative heavy workload. The Patent Trial and
standard net and the experimental net. Approach to Institution Decisions in Appeal Board (PTAB) has issued over
The vessels will alternate the use of the Post Grant Administrative Reviews 2,200 decisions on institution and over
standard net and the net with the 450 final written decisions. In three-
experimental gear, giving each vessel AGENCY: United States Patent and plus years, the PTAB has not missed
the same amount of tows using each Trademark Office, Commerce. one statutory or regulatory deadline. At
gear type. The two vessels would be of ACTION: Request for comments. the same time, the PTAB has reduced
similar size and horsepower with the backlog of ex parte appeals.
identical doors, legs, and ground cables. SUMMARY: The United States Patent and Notwithstanding the success-to-date,
The vessels will concurrently conduct Trademark Office (USPTO) is requesting the USPTO is pro-actively looking for
seven days of research fishing over the comments on a proposed pilot program ways to enhance its operations for the
course of two to three trips, with a pertaining to the institution and benefit of its stakeholders and therefore
minimum of six tows per day for each conduct of the post grant administrative is interested in exploring alternative
vessel, with each tow lasting an hour. trials provided for in the Leahy-Smith approaches that might improve its
This will provide a minimum of 84 tows America Invents Act (AIA). The AIA efficiency in handling AIA post grant
(42 with the standard net and 42 with provides for the following post grant proceedings while being fair to both
the experimental net) for the research administrative trials: Inter Partes sides and continuing to provide high
project. Each vessel would weigh its Review (IPR), Post-Grant Review (PGR), quality decisions. Based upon
respective catch of both scup and and Covered Business Method Review comments received from the public
windowpane flounder and measure the (CBM). The USPTO currently has a through public fora and formal requests,
length of 100 random samples of each panel of three APJs decide whether to the agency is considering a pilot
species after each tow. If fewer than 100 institute a trial, and then normally has program to test changing how the
individuals from a sample species are the same three-APJ panel conduct the institution phase of a post grant
caught, all individuals will be trial, if instituted. The USPTO is proceeding is handled.
measured. The total weight of all considering a pilot program under Once trial is instituted, the AIA
additional species from each tow will be which the determination of whether to mandates that the resulting trial be
obtained either by weighing or by catch institute an IPR will be made by a single conducted before a three-member panel
asabaliauskas on DSK5VPTVN1PROD with NOTICES
estimations. APJ, with two additional APJs being of the PTAB. Generally, under current
The vessels would retain legal size assigned to the IPR if a trial is instituted. practice, the same panel of three
scup and other legally permitted species Under this pilot program, any IPR trial administrative patent judges (APJs)
to be landed and sold. Windowpane will be conducted by a panel of three decides whether to institute and, if
flounder and other prohibited species APJs, two of whom were not involved instituted, handles the remainder of the
will not be retained. No additional in the determination to institute the IPR. proceeding, much like how federal
mortality of fish species or interactions DATES: Comment Deadline Date: To be district court judges handle cases
with protected species would occur ensured of consideration, written through motions to dismiss, summary
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![51542 Federal Register / Vol. 80, No. 164 / Tuesday, August 25, 2015 / Notices
Dated: August 20, 2015. the Secretary of Defense independent Public’s Accessibility to the Meeting
Michelle K. Lee, advice and recommendations regarding
Under Secretary of Commerce for Intellectual a construction standard for military Pursuant to 5 U.S.C. 552b, as
Property and Director of the United States medical centers to provide a single amended, and 41 CFR 102–3.140
Patent and Trademark Office. standard of care, as set forth in this through 102–3.165 and subject to
[FR Doc. 2015–21052 Filed 8–24–15; 8:45 am] notice: availability of space, this meeting is
open to the public. Seating is limited
BILLING CODE 3510–16–P a. Reviewing the unified military
and is on a first-come basis. All
medical construction standards to
determine the standards consistency members of the public who wish to
DEPARTMENT OF DEFENSE with industry practices and benchmarks attend the public meeting must contact
for world class medical construction; Ms. Kendal Brown at the number listed
Office of the Secretary in the section FOR FURTHER INFORMATION
b. Reviewing ongoing construction CONTACT no later than 12:00 p.m. on
Independent Review Panel on Military programs within the DoD to ensure Tuesday, September 1, 2015, to register.
Medical Construction Standards; medical construction standards are
Notice of Federal Advisory Committee uniformly applied across applicable Special Accommodations
Meeting military centers;
Individuals requiring special
AGENCY: Department of Defense (DoD). c. Assessing the DoD approach to accommodations to access the public
planning and programming facility
ACTION: Notice of meeting. meeting should contact Ms. Kendal
improvements with specific emphasis
Brown at least five (5) business days
SUMMARY: The Department of Defense is on facility selection criteria and
prior to the meeting so that appropriate
publishing this notice to announce the proportional assessment system; and
arrangements can be made.
following Federal Advisory Committee facility programming responsibilities
meeting of the Independent Review between the Assistant Secretary of Written Statements
Panel on Military Medical Construction Defense for Health Affairs and the
Standards (‘‘the Panel’’). Secretaries of the Military Departments; Any member of the public wishing to
DATES:
provide comments to the Panel may do
d. Assessing whether the
Comprehensive Master Plan for the so in accordance with 41 CFR 102–
Friday, September 11, 2015 3.105(j) and 102–3.140 and section
National Capital Region Medical (‘‘the
8:00 a.m.–9:00 a.m. EDT Master Plan’’), dated April 2010, is 10(a)(3) of the Federal Advisory
(Administrative Working Meeting) adequate to fulfill statutory Committee Act, and the procedures
9:00 a.m.–11:30 a.m. EDT (Open requirements, as required by section described in this notice.
Session) 2714 of the Military Construction Individuals desiring to provide
11:30 a.m.–1:30 p.m. EDT Authorization Act for Fiscal Year 2010 comments to the Panel may do so by
(Administrative Working Meeting) (division B of Pub. L. 111–84; 123 Stat. submitting a written statement to the
ADDRESSES: Falls Church Marriott 2656), to ensure that the facilities and Executive Director (see FOR FURTHER
Fairview Park, 3111 Fairview Park organizational structure described in the INFORMATION CONTACT). Written
Drive, Falls Church, Virginia, 22042. Master Plan result in world class statements should address the following
FOR FURTHER INFORMATION CONTACT: The military medical centers in the National details: the issue, discussion, and a
Executive Director and Designated Capital Region; and recommended course of action.
Federal Officer is Ms. Christine Bader, e. Making recommendations regarding Supporting documentation may also be
7700 Arlington Boulevard, Suite 5101, any adjustments of the Master Plan that included, as needed, to establish the
Falls Church, Virginia 22042, are needed to ensure the provision of appropriate historical context and to
Christine.e.bader.civ@mail.mil, (703) world class military medical centers and provide any necessary background
681–6653, Fax: (703) 681–9539. For delivery system in the National Capital information.
meeting information, please contact Ms. Region.
Kendal Brown, 7700 Arlington The Executive Director will review all
Boulevard, Suite 5101, Falls Church, Agenda timely submissions with the Panel
Virginia 22042, Kendal.l.brown2.ctr@ Chairperson and ensure they are
mail.mil, (703) 681–6670, Fax: (703) Pursuant to 5 U.S.C. 552b, as provided to members of the Panel before
681–9539. amended, and 41 CFR 102–3.140 the meeting that is subject to this notice.
through 102–3.165 and subject to After reviewing the written comments,
SUPPLEMENTARY INFORMATION: This
availability of space, the Panel meeting the Panel Chairperson and the Executive
meeting is being held under the
is open to the public from 9:00 a.m. to Director may choose to invite the
provisions of the Federal Advisory
11:30 a.m. on September 11, 2015, as submitter to orally present their issue
Committee Act of 1972 (5 U.S.C.,
the Panel will meet in an open forum to during the open portion of this meeting.
Appendix, as amended), the
deliberate the findings and The Executive Director, in consultation
Government in the Sunshine Act of
recommendations that will be contained with the Panel Chairperson, may allot
1976 (5 U.S.C. 552b, as amended), and
in the Panel’s final report to the time for members of the public to
41 CFR 102–3.150.
Secretary of Defense. present their issues for review and
asabaliauskas on DSK5VPTVN1PROD with NOTICES
Purpose of the Meeting discussion by the Panel.
Availability of Materials for the
At this meeting, the Panel will Meeting Dated: August 20, 2015.
publically deliberate its findings and
recommendations of its final report A copy of the agenda or any updates Aaron Siegel,
addressing the Ike Skelton National to the agenda for the September 11, Alternate OSD Federal Register Liaison
Defense Authorization Act (NDAA) for 2015, meeting, as well as any other Officer, Department of Defense.
Fiscal Year 2011 (Pub. L. 111–383), materials presented, may be obtained at [FR Doc. 2015–20956 Filed 8–24–15; 8:45 am]
Section 2852(b) requirement to provide the meeting. BILLING CODE 5001–06–P
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Document Created: 2018-02-23 11:02:51
Document Modified: 2018-02-23 11:02:51
| Category | Regulatory Information | |
| Collection | Federal Register | |
| sudoc Class | AE 2.7: GS 4.107: AE 2.106: | |
| Publisher | Office of the Federal Register, National Archives and Records Administration | |
| Section | Notices | |
| Action | Request for comments. | |
| Dates | Comment Deadline Date: To be ensured of consideration, written comments must be received on or before October 26, 2015. | |
| Contact | Scott R. Boalick, Vice Chief Administrative Patent Judge, Patent Trial and Appeal Board, by telephone at (571) 272-9797. | |
| FR Citation | 80 FR 51540 |
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