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Monday Jul 14, 2014

Help Improve our AIA Trial Proceedings

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

In the spirit of transparency and collaboration with stakeholders in forming an even stronger patent system, I am pleased to share that the USPTO is seeking your written comments about the America Invents Act (AIA) trial proceedings conducted by the our Patent Trial and Appeals Board (PTAB). The USPTO's request for this input follows the series of AIA Trial Roundtables we conducted in April and May of this year. The purpose of these roundtables was to educate the public about the trials and to hear thoughts on what’s working well with them, and what are some areas for improvement.

The PTAB has been conducting AIA trials for nearly two years. During this time, the PTAB has gained experience and insights about the trial proceedings. The same is true for the public. As a result, the USPTO is eager to learn about these experiences and consider ways to increase the efficiency and effectiveness of these PTAB trial proceedings.

Late last month, we published a Federal Register Notice identifying a variety of topics for written comments, including claim construction, amendment practice, and management of concurrent proceedings before the office. The topics identified in the notice reflect subject matter raised most often by the public at the roundtables, as well as additional areas the USPTO believes public input would be helpful. Here is a selection of the questions presented for your comment:

  • Under what circumstances, if any, should the PTAB decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?
  • What modifications, if any, should be made to the PTAB’s practice regarding motions to amend?
  • How should multiple proceedings before the USPTO involving the same patent be coordinated? Multiple proceedings before the USPTO include, for example: (i) two or more separate AIA trials; (ii) an AIA trial and a reexamination proceeding; or (iii) an AIA trial and a reissue proceeding.

After carefully reviewing the written comments along with the oral feedback from the roundtables, we will consider what, if any, changes to the trial proceedings would help improve the speed and effectiveness of the proceedings. Use this opportunity to share your experiences and recommendations. Both positive comments and constructive criticism are welcomed, as the PTAB needs to know what aspects of the trial proceedings are working well in addition to aspects that may require some fine tuning. We have a world class patent system, and this is a golden opportunity to make it even better. I encourage you to take advantage of it, and let your voice be heard by submitting written feedback in response to the USPTO’s request for comments. The deadline is September 16, 2014.


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