Flying high: PTAB's Pilot Program For One-Judge Reviews

The pilot program proposed by the Patent Trial and Appeal Board (PTAB) is a winwin for both patent owners and the PTAB as it offers the former a chance to try one’s case before an objective trial-phase panel, while the latter stands to benefit too as two of three judges who would have been involved in the institution phase of an IPR are now free to look into other matters…

The pilot program proposed by the Patent Trial and Appeal Board (PTAB) for a single judge to evaluate an inter partes review (IPR) petition has the potential to address several perceived problems with the current IPR process.

The US Patent and Trademark Office (USPTO) published a notice seeking comments on a potential pilot program aimed at addressing patent owners’ concerns of bias surrounding IPR proceedings and easing the strain on the PTAB’s resources. Currently, a three-judge panel reviews a petition for an IPR for compliance with statutory requirements. If the panel decides to institute a review of a challenged patent, the same judges preside over the remainder of the IPR proceeding.

In a Federal Register notice, the USPTO proposed a different structure. Specifically, under a pilot program, a single judge would be responsible for evaluating petitions and deciding whether to institute a review. In the event a review is instituted, two additional judges would join the original judge to form a three-judge panel to preside over the remainder of the proceeding.

When the one-judge institution proposal was floated initially, USPTO Director Michelle Lee cited complaints of bias by patent owners as one impetus. Understanding this concern requires some familiarity with the distinct phases of an IPR proceeding and an appreciation for the hurdle a petitioner must clear to advance from one phase to the next.

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