America Invents Act Proceedings Subject to Interim Process by the United States Patent & Trademark Office
America Invents Act Proceedings Subject to Interim Process by the United States Patent & Trademark Office
The USPTO is instituting an Interim Process for Patent Trial and Appeal Board (PTAB) Workload Management concerning the establishment of America Invents Act proceedings.
For the time being, decisions on instituting an IPR (inter partes review) or a PGR (post-grant review) will be divided between (i) discretionary considerations and (ii) merits and additional statutory concerns.
To support this two-part approach, the USPTO will allow parties to submit separate briefs addressing discretionary factors apart from those discussing the merits and other statutory issues. Dr. Jon Platt recently addressed this process in more detail here.
Once received, with the input of a minimum of three PTAB judges, the Director will decide if it is appropriate to issue a discretionary denial, based on the briefing of both discretionary considerations and the merits/statutory considerations. A referral of the petition to a panel of 3 PTAB judges will be made if the director determines a discretionary denial is not appropriate. The judges will then decide on the statutory considerations and merits.
The USPTO’s goal for the new process is better management of PTAB workloads, a reduction of ex parte appeal pendency and an attempt at ensuring uniformity with regard to determinations on America Invents Act institution.
The changes will immediately take effect and will be in force across all cases in which the owner of a patent hasn’t filed a preliminary response.
On April 17th, 2025 the USPTO Is hosting a Boardside Chat Webinar with additional information.
The intellectual property attorneys at Renner Otto will continue to monitor this and other USPTO related news as it develops. Feel free to contact us for more information.
