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PTAB SOP 1 Explains APJ Paneling Process

Recently the USPTO Patent Trial and Appeal Board (PTAB) revised several of its Standard Operating Procedures (SOPs), including PTAB SOP 1 which relates to how Administrative Patent Judges (APJs) are assigned to cases. SOP 1 also explains why a panel might change, and the limited use of expanded panels.

PTAB SOP 1 – Assigning APJs

Revised PTAP SOP 1 outlines a hierarchy of considerations behind how APJs are assigned to cases. These include, in general order of importance:

  • Avoiding conflicts of interest

  • The preference of an APJ for ex parte appeals vs. other cases

  • Maintaining workflow/workload

  • Assigning cases to APJs with a relevant technical background

Consideration also is given to impaneling newer APJs with more experienced APJs, and assigning related cases to the same or overlapping panels.

Because I often request an oral hearing, I was interested to see the additional considerations for cases with oral hearings:

  • Unless the needs of the PTAB require otherwise, ex parte appeals with hearings will be assigned to APJs who are paneled on ex parte appeals only.

  • At least two APJs serving in Alexandria or a regional office should be assigned to an ex parte appeal with a hearing. (The two judges need not serve in the same office.)

  • APJs from different technology clusters may be assigned to accommodate a heard ex parte appeal conducted outside of the Alexandria office.

PTAB SOP 1 – Panel Changes

New to revised SOP 1 is more transparency on panel changes. SOP 1 explains three categories of reasons for panel changes:

  • recusal due to conflict

  • unavailability of an APJ (e.g., leave)

  • a need to meet PTAB deadlines

If the panel already has appeared in a case, the parties will be notified of a panel change by a Panel Change Order that will identify the new panel and give the category of reason for the panel change (“recusal,” “unavailability,” or “deadlines”).

PTAB SOP 1 – Expanded Panels

Revised SOP 1 also discusses expanded panels, which “may be used, where appropriate, to secure and maintain uniformity of the Board’s decisions, , in related cases ordinarily involving different three judge panels.” As noted in SOP 1, the use of expanded panels to “establish[] binding agency authority concerning major policy or procedural issues, or other issues of exceptional importance, are generally expected to be addressed using the [new Precedential Opinion Panel] procedures set forth in Standard Operating Procedure 2.”

Read more about SOP 2 in this article on PTAB Trial Insights.

An expanded panel can be requested by any Board member (including a statutory Board member), or Patent Business Unit, or requested by a party in a briefing paper. All requests for an expanded panel must be recommended by the Chief Judge and approved by the Director.

When an expanded panel is designated after a case has been assigned to a panel but before a decision is entered, the original APJs usually will be on the expanded panel. If an expanded panel is designated after entry of a panel decision in order to consider a request for rehearing, the original APJs usually will be on the expanded panel.

Peek Behind The Curtains

While most of SOP 1 explains current PTAB practices and procedures, it is interesting to have this “peek behind the curtain” and a better understanding of how APJs are assigned to cases.

© 2019 Foley & Lardner LLP


About this Author

Courtenay C. Brinckerhoff, intellectual property  law attorney, Foley & Lardner  Law Firm

Courtenay Brinckerhoff is a partner and intellectual property lawyer with Foley & Lardner LLP. Ms. Brinckerhoff’s practice focuses on client counseling in all aspects of obtaining, licensing and enforcing patents and conducting freedom-to-operate and due diligence investigations. She is chair of the firm’s IP Law and Practice committee, immediate past vice chair of the firm’s Chemical, Biotechnology & Pharmaceutical Practice and a member of the firm's Patent Trials group, Appellate Practice and Life Sciences Industry Team. She also is involved with Foley’s...