Since taking office in 2018, U.S. Patent and Trademark Office (USPTO) Director, Andrei Iancu, has focused on making Patent Trial and Appeal Board (PTAB) processes more consistent and transparent. He has increased the number of PTAB decisions considered precedent setting from 14 over the last six years to 11 already in 2019. Also, the PTAB no longer expands judge panels without notifying the public or parties, and patent owners have been given new options in amending patent claims during PTAB patent challenge proceedings.
Practitioners say these changes were needed, but the power shift on precedent setting does raise concern. “It puts a lot of power in the hands of the director,” Trenton Ward, partner at Finnegan and a former PTAB judge, said of the changes to the precedential designation process. It’s “supposed to bring about consistency, but if you had a new director come in that wanted to change the direction on many issues, it could actually end up leading to less.”
The PTAB recently changed the precedential designation process requiring majority support from all voting PTAB judges to a less wieldy process by creating a screening committee, which considers whether to pass along to the Executive Judges Committee decisions nominated by the public, agency members, and board members, and a Precedential Opinion Panel (POP), which considers recommendations from parties in PTAB cases or PTAB judges. Ward noted that POP review is “definitely establishing that the administrative patent judges’ judgments are subject, to review, approval and potentially veto by the director.”
Iancu is clearly making his mark, at least for now. “We’re seeing so many cases in a relatively short period of time being designated as precedential,” commented Ward. “But only time will tell as to what level of consistency and transparency it will bring about.”