The final year of Director Vidal’s tenure as the Director of the U.S. Patent and Trademark Office was a busy year for rulemaking at the Office. Since late 2023, five Notices of Proposed Rulemaking (NPRMs) directly related to Patent Trial and Appeal Board (PTAB) practice were published for public comment. Of those, four have issued as final rules as of December 31, 2024. The fifth, the NPRM on Patent Trial and Appeal Board Rules of Practice for Briefing Discretionary Denial Issues, and Rules for 325(d) Considerations, Instituting Parallel and Serial Petitions, and Termination Due to Settlement Agreement,1 is still awaiting a final rule after the public comment period closed in June 2024. 89 Fed. Reg. 28,693.
The following is an overview of the four PTAB related final rules that became effective in 2024. Also included is an identification of noteworthy fiscal year 2025 fee changes that affect PTAB practice.
Expanding Opportunities to Appear Before the Patent Trial and Appeal Board2
This final rule, which published on October 10, 2024, and became effective November 12, 2024, relates to access to practice before the PTAB. 89 Fed. Reg. 82,172. This rule change simplifies and streamlines the pro hac vice recognition process, as well as permits a party to forego appointing backup counsel with a showing of good cause.
In particular, Rule 42.10(a) was revised to permit a party to proceed without separate backup counsel, upon a showing of good cause, such as lack of financial resources. In the Office comments accompanying the final rule, the Office indicated that a party is unlikely to be able to show lack of financial resources if also pursuing litigation in other forums involving the challenged patent. The comments further note that the inquiry focuses on the needs of the party requesting the relief, and not the needs or preferences of counsel.
Rule 42.10(c) was revised to establish a streamlined procedure for pro hac vice recognition for counsel who have been previously recognized as such in a prior PTAB proceeding. § 42.10(c)(2). No fee is required for this streamlined process, however a person seeking recognition must still file a declaration (or affidavit) affirming all requirements for admission are met. The rule also allows the opposing party to filed objections within five business days, but unless the Board orders otherwise within 10 business days, the person is deemed admitted upon filing of updated mandatory notices.
Rule 42.10(c) also was revised to clarify the requirement that any non-registered counsel that has been recognized pro hac vice must inform the Board of any updates relevant to the completeness of accuracy of information provided in connection with a prior pro hac vice request. § 42.10(c)(3). Another clarifying amendment to Rule 42.10(c) was that a party must establish legal familiarity with the subject matter (as opposed to technical familiarity) to support a pro hac vice request. § 42.10(c)(1).
In response to public comment on the proposed rule, the final rule did not include a proposed amendment to permit non-registered counsel to serve as lead counsel.
Rules Governing Director Review of Patent Trial and Appeal Board Decisions3
This final rule, which published on October 1, 2024, and became effective October 31, 2024, relates to the process and procedures by which the USPTO Director has review authority over PTAB decisions. 89 Fed. Reg. 79,744.
New Rule 42.75 was added, codifying much of the prior interim process for Director Review that was implemented (and subsequently revised) after the U.S. Supreme Court’s decision in United States v. Arthrex, Inc., 141 S. Ct. 1970, 1986 (2021).
Additional details regarding this new rule are in the article titled: Process and Procedures for Director Review of PTAB Decisions Codified in 2024
This final rule, which published on September 18, 2024, and became effective October 18, 2024, addresses motions to amend at the PTAB. 89 Fed. Reg. 76,421.
A major highlight of the rule changes implemented in this final rule is the option for patent owners to request non-binding preliminary guidance from the Board on their motion to amend, and file a revised motion to amend if desired. These rules makes permanent much of the PTAB’s motion to amend pilot program, which was implemented in March 2019 and expired as of the effective date of this new rule.
Rule 42.121(a) was amended to reflect the allowance of requests for preliminary guidance on an original motion to amend. Note, for each of the IPR-specific motion to amend rules, there is a corresponding PGR-specific motion to amend rule, e.g., Rule 42.221(a) here.
Rule 42.121(e) was newly added, and provides additional details regarding the preliminary guidance process, as well as for subsequent briefing by the parties. The patent owner may request, and the Board will provide, non-binding preliminary guidance on the motion to amend. § 42.121(e)(1)-(2). In response, patent owners may file either a patent owner reply or a revised motion to amend in response.
§ 42.121(e)(3). Petitioners may file a sur-reply to the reply (or reply to the preliminary guidance if patent owner does not respond, to which patent owner can file a sur-reply). § 42.121(e)(4). These rules also set out at which stage(s) new evidence can be submitted.
Rule 42.121(f), also new, authorizes one revised motion to amend as of right in response to petitioner’s opposition or the Board’s preliminary guidance that is responsive to issues in those papers. The revised motion replaces the original motion to amend.
Other clarifying amendments were incorporated into the Motion to Amend rules, including:
Rule 42.121(b) was clarified to reflect that support in the original disclosure must be included in the motion for each proposed substitute claim.
Rule 42.121(d) was amended to include reference to the types of evidence that the Board may consider in exercising its discretion to grant or deny a motion to amend or to raise a new ground of unpatentability of a proposed substitute claim, 42.121(d)(3). This can include all evidence of record, and the Board also may make of record any evidence from related proceedings, may judicially notice evidence, or may request examination assistance from the examining corps. If the Board raises a new ground, patentability is determined based on a preponderance of evidence in the record, 42.121(d)(4). These revisions do not change the parties’ burdens as previously set out in 42.121(d)(1)-(2).
Rules 42.121(e)(1) and 42.121(f)(1) also expressly state that the Board may request the Chief Judge to extend the final written decision deadline in accordance with Rule 42.100(c).
This final rule, which published on June 12, 2024, and became effective July 12, 2024, addresses the process for decision circulation at the PTAB. 89 Fed. Reg. 49,808. This rule sets forth processes and procedures for PTAB decision circulation and internal PTAB review, with a goal to promote consistent, clear, and open decision-making processes.
New Rules 43.1-6 were added, codifying much of the prior interim process, originally put into place in May 2022, and subsequently modified and memorialized in PTAB SOP4 in October 2023.
Rules 43.1 and 43.2 provide relevant definitions.
Rule 43.3 specifies that the Director and other high-level officers of the USPTO are not involved in panel decisions prior to their issuance. § 43.3(a). In particular, unless sitting as a member of the panel, the Director or other high-level officers will not communicate with panel members regarding the merits of a decision prior to issuance or otherwise attempt to influence or direct the outcome thereof. § 43.3(b)-(c). Paneling authority is delegated, without interference in individual proceedings, to the Chief Judge. § 43.3(d).
Rule 43.4 ensures independent decision making by individual Board panels. PTAB management may not communicate with a panel regarding the merits of a decision prior to issuance, unless (1) a member of the panel specifically requests input, or (2) the management judge is sitting as a member of the panel. § 43.4(a)-(b), (d)-(e). Acceptance of any suggested edits or feedback from management or otherwise is at the sole discretion of the panel. § 43.4(c).
Rule 43.5 sets out a procedure for pre-issuance circulation to and review by a designated group of non-management judges, with a goal of ensuring consistent, clear, and open decision-making. By rule, PTAB management may not be involved in this pre-issuance review process, § 43.5(a), and acceptance of any suggested edits or feedback is at the sole discretion of the panel, § 43.5(b). This rule makes clear that the panel has final authority and responsibility for the content of a decision. § 43.5(b).
Rule 43.6 specifies that all Board decisions must comply with all applicable statutes, regulations, binding case law, and written Office policy and guidance applicable to Board proceedings, expressly confirms there is no unwritten Office or Board policy or guidance binding on any panel, and requires that any binding guidance must be written and public.
Setting and Adjusting Patent Fees During Fiscal Year 20256
This final rule, which published on November 20, 2024, and becomes effective January 19, 2025, sets and adjusts fees. 89 Fed. Reg. 91,898. Of most relevance to PTAB practice and procedure, fees for AIA trial proceedings are increasing by 25% across the board. § 42.15. Further, a new fee of $452 for requesting Director Review is to be added. § 42.15(f).
[1] https://www.federalregister.gov/documents/2024/04/19/2024-08362/patent-trial-and-appeal-board-rules-of-practice-for-briefing-discretionary-denial-issues-and-rules
[2] https://www.federalregister.gov/public-inspection/2024-23319/expanding-opportunities-to-appear-before-the-patent-trial-and-appeal-board
[3] https://www.federalregister.gov/public-inspection/2024-22194/director-review-of-patent-trial-and-appeal-board-decisions
[4] https://www.federalregister.gov/documents/2024/09/18/2024-21134/rules-governing-motion-to-amend-practice-and-procedures-in-trial-proceedings-under-the-america
[5] https://www.federalregister.gov/public-inspection/2024-12823/rules-governing-pre-issuance-internal-circulation-and-review-of-decisions-within-the-patent-trial
[6] https://www.federalregister.gov/documents/2024/11/20/2024-26821/setting-and-adjusting-patent-fees-during-fiscal-year-2025
This article appeared in the 2024 PTAB Year in Review: Analysis & Trends report.
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