80 FR 67734 - Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews; Reopening of Period for Comments
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office Federal Register Volume 80, Issue 212 (November 3, 2015)
United States Patent and Trademark Office
Federal Register Volume 80, Issue 212 (November 3, 2015)
| Page Range | 67734-67734 | |
| FR Document | 2015-28107 |
[Federal Register Volume 80, Number 212 (Tuesday, November 3, 2015)] [Notices] [Page 67734] From the Federal Register Online [www.thefederalregister.org] [FR Doc No: 2015-28107] ----------------------------------------------------------------------- DEPARTMENT OF COMMERCE United States Patent and Trademark Office [Docket No.: PTO-P-2015-0055] Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews; Reopening of Period for Comments AGENCY: United States Patent and Trademark Office, Commerce. ACTION: Request for comments; reopening of comment period. ----------------------------------------------------------------------- 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), Public Law 112-29, 125 Stat. 284 (2011). The AIA provides for the following post grant administrative trials: Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method Patent Review (CBM). The USPTO currently has a panel of three Administrative Patent Judges (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. The USPTO published a request for comments in the Federal Register on August 25, 2015, seeking public comment on a proposed pilot program pertaining to the institution and conduct of these post grant administrative trial proceedings. See Request for Comments on a Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews, 80 FR 51540 (Aug. 25, 2015). The USPTO is now extending the period for public comment until November 18, 2015. DATES: Comment Deadline Date: Written comments on the notice published August 15, 2015 (80 FR 51540) must be received on or before November 18, 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 by telephone at (571) 272-9797. SUPPLEMENTARY INFORMATION: 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 proactively 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 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 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. The request for comments on the proposed pilot indicated that written comments must be received on or before October 26, 2015. See id. at 51540. In view of stakeholder requests for additional time to submit comments on the new administrative trial proceedings, the USPTO is now extending the period for public comment until November 18, 2015. Dated: October 29, 2015. Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2015-28107 Filed 11-2-15; 8:45 am] BILLING CODE 3510-16-P
![67734 Federal Register / Vol. 80, No. 212 / Tuesday, November 3, 2015 / Notices
Dated: October 29, 2015. received on or before November 18, the statute prior to institution, and the
Jeffrey N. Lonergan, 2015. USPTO believes it is prudent to explore
Acting Deputy Director, Office of Sustainable ADDRESSES: Comments must be sent by other potentially more efficient options,
Fisheries, National Marine Fisheries Service. electronic mail message over the especially given that the number of
[FR Doc. 2015–27950 Filed 11–2–15; 8:45 am] Internet addressed to: PTABTrialPilot@ petitions filed may continue to increase.
BILLING CODE 3510–22–P uspto.gov. To date and currently, the agency has
Electronic comments submitted in intended to meet the resource demands
plain text are preferred, but also may be on the PTAB due to both AIA post grant
DEPARTMENT OF COMMERCE submitted in ADOBE® portable proceedings and ex parte appeals by
document format or MICROSOFT hiring additional judges. Even with
United States Patent and Trademark WORD® format. The comments will be continued hiring, however, increases in
Office available for viewing via the USPTO’s filings and the growing number of cases
[Docket No.: PTO–P–2015–0055] Internet Web site (http://www. may strain the PTAB’s continuing
uspto.gov). Because comments will be ability to make timely decisions and
Proposed Pilot Program Exploring an made available for public inspection, meet statutory deadlines. Therefore, the
Alternative Approach to Institution information that the submitter does not agency wishes to explore and gain data
Decisions in Post Grant Administrative desire to make public, such as an on a potentially more efficient
Reviews; Reopening of Period for address or phone number, should not be alternative to the current three-judge
Comments included in the comments. institution model. Having a single judge
decide whether to institute trial in a
AGENCY: United States Patent and FOR FURTHER INFORMATION CONTACT:
post grant proceeding, instead of a panel
Trademark Office, Commerce. Scott R. Boalick, Vice Chief
of three judges, would allow more
ACTION: Request for comments; Administrative Patent Judge by
judges to be available to attend to other
reopening of comment period. telephone at (571) 272–9797.
matters, such as reducing the ex parte
SUPPLEMENTARY INFORMATION: The first appeal backlog and handling more post
SUMMARY: The United States Patent and petitions for AIA post grant grant proceedings. The request for
Trademark Office (USPTO) is requesting administrative trials were filed on comments on the proposed pilot
comments on a proposed pilot program September 16, 2012. Since then, over indicated that written comments must
pertaining to the institution and 3,600 petitions have been filed, and over
conduct of the post grant administrative be received on or before October 26,
1,500 trials have been instituted. The 2015. See id. at 51540. In view of
trials provided for in the Leahy-Smith USPTO has thus far been able to meet
America Invents Act (AIA), Public Law stakeholder requests for additional time
the demands placed on its resources to submit comments on the new
112–29, 125 Stat. 284 (2011). The AIA created by the unexpectedly heavy
provides for the following post grant administrative trial proceedings, the
workload. The Patent Trial and Appeal USPTO is now extending the period for
administrative trials: Inter Partes Board (PTAB) has issued over 2,200
Review (IPR), Post-Grant Review (PGR), public comment until November 18,
decisions on institution and over 450 2015.
and Covered Business Method Patent final written decisions. In three-plus
Review (CBM). The USPTO currently Dated: October 29, 2015.
years, the PTAB has not missed one
has a panel of three Administrative statutory or regulatory deadline. At the Michelle K. Lee,
Patent Judges (APJs) decide whether to same time, the PTAB has reduced the Under Secretary of Commerce for Intellectual
institute a trial, and then normally has backlog of ex parte appeals. Property and Director of the United States
the same three-APJ panel conduct the Notwithstanding the success-to-date, Patent and Trademark Office.
trial, if instituted. The USPTO is the USPTO is proactively looking for [FR Doc. 2015–28107 Filed 11–2–15; 8:45 am]
considering a pilot program under ways to enhance its operations for the BILLING CODE 3510–16–P
which the determination of whether to benefit of its stakeholders and therefore
institute an IPR will be made by a single is interested in exploring alternative
APJ, with two additional APJs being approaches that might improve its DEPARTMENT OF EDUCATION
assigned to the IPR if a trial is instituted. efficiency in handling AIA post grant
Under this pilot program, any IPR trial proceedings while being fair to both Notice Inviting Postsecondary
will be conducted by a panel of three sides and continuing to provide high Educational Institutions To Participate
APJs, two of whom were not involved quality decisions. Based upon in Experiments Under the Experimental
in the determination to institute the IPR. comments received from the public Sites Initiative; Federal Student
The USPTO published a request for through public fora and formal requests, Financial Assistance Programs Under
comments in the Federal Register on the agency is considering a pilot Title IV of the Higher Education Act of
August 25, 2015, seeking public program to test changing how the 1965, as Amended
comment on a proposed pilot program institution phase of a post grant AGENCY: Office of Postsecondary
pertaining to the institution and proceeding is handled. Education, Department of Education.
conduct of these post grant Once trial is instituted, the AIA ACTION: Notice.
administrative trial proceedings. See mandates that the resulting trial be
Request for Comments on a Proposed conducted before a three-member panel SUMMARY: The Secretary invites
Pilot Program Exploring an Alternative of the PTAB. Generally, under current postsecondary institutions (institutions)
Approach to Institution Decisions in
mstockstill on DSK4VPTVN1PROD with NOTICES
practice, the same panel of three APJs that participate in the student financial
Post Grant Administrative Reviews, 80 decides whether to institute and, if assistance programs authorized under
FR 51540 (Aug. 25, 2015). The USPTO instituted, handles the remainder of the title IV of the Higher Education Act of
is now extending the period for public proceeding, much like how federal 1965, as amended (HEA), to apply to
comment until November 18, 2015. district court judges handle cases participate in a new institution-based
DATES: Comment Deadline Date: Written through motions to dismiss, summary experiment under the Experimental
comments on the notice published judgment, and trial. But a three-judge Sites Initiative (ESI). Under the ESI, the
August 15, 2015 (80 FR 51540) must be panel of the PTAB is not required under Secretary has authority to grant waivers
VerDate Sep<11>2014 18:04 Nov 02, 2015 Jkt 238001 PO 00000 Frm 00037 Fmt 4703 Sfmt 4703 E:\FR\FM\03NON1.SGM 03NON1](https://thefederalregister.org/doc/80_FR_67946/page/1.svg)
Document Created: 2018-03-01 11:33:06
Document Modified: 2018-03-01 11:33:06
| 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; reopening of comment period. | |
| Dates | Comment Deadline Date: Written comments on the notice published August 15, 2015 (80 FR 51540) must be received on or before November 18, 2015. | |
| Contact | Scott R. Boalick, Vice Chief Administrative Patent Judge by telephone at (571) 272-9797. | |
| FR Citation | 80 FR 67734 |
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