To guide and inform the public about the Patent Trial and Appeal Board’s practice surrounding post-grant proceedings, the Board periodically designates certain of its decisions as precedential or informative. As noted by the PTAB:
A precedential decision establishes binding authority concerning major policy or procedural issues, or other issues of exceptional importance, including constitutional questions, important issues regarding statutes, rules, and regulations, important issues regarding case law, or issues of broad applicability to the Board. Standard Operating Procedure 2, 2-3, 11.
An informative decision provides Board norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases. Standard Operating Procedure 2, 9.
Relatedly, the Patent Office uses a Precedential Opinion Panel “to decide issues of exceptional importance to the Patent Trial and Appeal Board (e.g., issues involving agency policy or procedure).” That Panel is composed of the Director of the Patent Office, the Commissioner for Patents, and the Chief Judge of the PTAB.
Recently, the U.S. Patent and Trademark Office announced that it established two online portals, to facilitate submitting 1) requests to designate precedential and informative decisions, and 2) amicus positions regarding requests for Panel review.
The Patent Office’s first resource is an online form that members of the public can use “to anonymously nominate any routine decision of the Board for designation as precedential or informative.” To nominate a decision, an interested person must provide information regarding:
- The type of nomination,
- The case number,
- The case name,
- The paper number, and
- Brief reasons for the nomination.
Nominations can be made anonymously, because providing a name and email address is currently optional.
The Patent Office’s second resource is an online form that members of the public can use “to submit an amicus request supporting or opposing a pending request for POP review in a particular case.” This form is more detailed, and it does not allow anonymous submissions because the information will be submitted into the record of the post-grant proceeding at issue. The form also requires the submitter of the amicus position to certify that the form is being submitted “within seven business days of entry of the Notification of Receipt of POP Request into the case docket or patent application file.” To submit a position as an amicus, an interested person must provide information regarding:
- Their name,
- Their affiliation,
- Client represented,
- Case number,
- Case name,
- Rehearing Request paper number,
- Type of amicus (supporting or opposing review),
- Brief reasons for supporting or opposing POP review (3000-character limit), and
- Relationship to a party to the proceeding.
At the submission form, the Patent Office suggests that the “reasons for supporting or opposing POP review” could, for example, explain why “the decision is/is not contrary to Supreme Court, Federal Circuit, or Board precedent,” among other reasons.