Last week at the Patent Public Advisory Committee’s quarterly meeting, Acting Chief Judge Nathan Kelley discussed a number of topics related to the PTAB, including an update on the forthcoming rule changes for AIA trial proceedings and the recent designation of two decisions as precedential. In addition, a new pilot program was announced that will begin this spring and is designed to establish a bridge between the PTAB and patent examiners examining applications that claim priority to patents involved in an IPR.
Since the period for public comments on the PTAB’s proposed rule package closed in November, many have been wondering when these new rules would take effect. According to Acting Chief Judge Kelley, the final rules are now beginning the internal clearance process at the agency with a goal of publication by the end of March. While the final rules could easily encounter some of the usual snags that accompany getting something published in the Federal Register, it seems likely that we will see the new rules and an updated Trial Practice Guide at some point this spring.
The PTAB recently designated two decisions as precedential: LG Electronics, Inc. v. Mondis Tech Ltd., which pertains to interpretation of “served with a complaint” for purposes of triggering the one-year time bar for filing an IPR or other post-grant petition; and Westlake Services, LLC v. Credit Acceptance Corp., which interprets the estoppel provision attached to petitions for post-grant review. While these represent only the second and third decisions from an AIA trial proceeding to be designated precedential, Acting Chief Judge Kelley said he hopes to see an increase in the number of precedential decisions in the future, especially since Decisions to Institute are not appealable (at least for now).
As part of its ongoing Enhanced Patent Quality Initiative, the PTO recently looked at a small sample size of 100 pending applications with a parent involved in an IPR proceeding. They found that only about 50% of the U.S. patents and 25% of the non-patent literature cited in the petition were of record in the pending child application. While this only represented a snapshot at a particular time, those numbers were enough to raise some concern at the PTO. With the pilot program, the office hopes that providing examiners with the prior art submitted during PTAB post-grant proceedings in real time will lead to enhanced patentability determinations in the related child cases.