The PTAB follows a decision circulation process, circulating certain categories of PTAB draft decisions, listed below, to a pool of non-management peer judges (the "Circulation Judge Pool") prior to issuance. These decisions include all AIA institution decisions; AIA final written decisions; AIA decisions on rehearing; decisions on remand from the Federal Circuit; inter partes reexamination appeal decisions; and certain categories of ex parte appeal, ex parte reexamination appeal, and reissue appeal decisions as designated by PTAB management. If judges believe other opinions warrant circulation, they may, at their option, circulate other types of decisions for review.
The Circulation Judge Pool (CJP) comprises a representative group of at least eight non-management PTAB judges, who collectively have technical/scientific backgrounds and legal experience representative of the PTAB judges as a whole. Each decision reviewed by the CJP is reviewed by at least two CJP judges. The CJP is open to any PTAB judge. Each judge on the CJP typically serves a one-year term. Volunteers are solicited periodically, and final selections are made by the PTAB Executive Management in consultation with the Lead Judges of the volunteers. Judges are chosen to serve on the CJP so as to contribute to a balanced committee in which members have diverse technical backgrounds and professional experiences.
The CJP is modeled after both the Federal Circuit’s previous office of the Senior Technical Assistant (STA), and the Federal Circuit's 10-day circulation process for precedential decisions. The STA provided information on potential conflicts between a panel-approved precedential opinion and any other prior opinions of the court or other relevant precedents. The Federal Circuit's 10-day circulation process provides non-panel members with an opportunity to review a precedential decision prior to issuance. Unlike the Federal Circuit’s 10-day circulation process according to which a non-panel member may not only provide input and feedback on a decision but may also hold a decision pending a request for an en banc poll, the CJP review process does not include an option to hold a decision. And, because circulation of draft decisions to all non-panel PTAB judges would be unwieldy given the number of PTAB judges, the CJP is chosen to be representative of the entire PTAB.
The goal of the CJP review is to provide helpful feedback on decisions prior to issuance. For each reviewed PTAB decision, the CJP provides the panel with information regarding potential conflicts or inconsistencies with relevant authority, including Director-written guidance and other USPTO policy. The CJP also provides the panel with information regarding potential inconsistencies with other PTAB decisions and suggestions for improved readability and stylistic consistency.
The panel has final authority and responsibility for the content of a decision and determines whether and how to incorporate feedback from the CJP. Judges are required to apply pertinent statutes, binding case law, as well as written guidance issued by the Director or the Director’s delegate that is applicable to PTAB proceedings. There is no unwritten guidance applicable to PTAB proceedings that judges are required to apply. As has been customary, where judges on a panel have additional or dissenting views, they may express them in concurring or dissenting opinions as they deem appropriate. Such views are an important part of the judicial process. They may be impactful to the Director in deciding which decisions to review.
Based on its review, the CJP identifies notable draft decisions (such as decisions that address issues of first impression, that appear inconsistent with USPTO policy, or that involve areas where policy clarification may be needed) to PTAB Executive Management. PTAB Executive Management may discuss decisions after issuance with the Director and/or the Director Review Advisory Committee for consideration for Director-initiated review. PTAB Executive Management may also discuss decisions after issuance with the Advisory Committee for consideration for Director Review.
The CJP has periodic meetings with PTAB Executive Management to discuss potentially conflicting panel decisions and general areas for potential policy clarification. PTAB Executive Management may discuss these issues with the Director for the purpose of considering whether to issue new or updated policies through regulation, precedential or informative decisions, and/or a Director guidance memorandum.
Although the Director has oversight of rules, policies and procedures, the Director is not involved, pre-issuance, in directing or otherwise influencing any panel decisions. Pursuant to Standard Operating Procedure 1, the Director has delegated the authority to assign judges to panels to the Chief Judge of the PTAB and those to whom the Chief Judge further delegates that authority. The Director is not involved in directing or otherwise influencing the paneling for any proceeding before the PTAB.
Any panel member, at their sole discretion, may also optionally consult with one or more members of PTAB management (i.e., PTAB Executive Management and Lead Judges) regarding a decision prior to issuance. Adoption of any suggestions provided by PTAB management based on such consultation is optional. As with the CJP’s feedback, the panel has final authority and responsibility for the content of a decision, and determines whether and how to incorporate feedback from PTAB management. Unless consulted by a panel member, PTAB management does not make suggestions to the panel on any pre-issuance decisions, either directly or indirectly through the CJP
Additionally, as required by Standard Operating Procedure 9 for handling decisions on cases remanded from the Federal Circuit, panels are required to meet with the Chief Judge, Deputy Chief Judge, and/or delegate to discuss issues presented by the Federal Circuit’s decision, as well as the expected procedure for preparing a remand decision. A panel may elect, at its own discretion, to satisfy this process by sending an email to the assigned delegate (or Deputy Chief Judge if no delegate has been designated) with the required information. If a remand meeting is conducted, any suggestions provided by the Chief Judge, Deputy Chief Judge, or delegate are optional. The panel has final authority and responsibility for the content of a decision, and determines whether and how to incorporate any feedback.
No member of the CJP will participate in the review of a PTAB decision if that member has a conflict of interest. Additionally, CJP members will follow the guidance on conflicts of interest set forth in the PTAB’s Standard Operating Procedure 1 and will recuse themselves from any discussion or analysis involving cases or related cases on which they are paneled. In the event of a conflict of interest, the member(s) will notify the other members of the CJP that a conflict exists and will not participate in the discussion of the conflicted matter.
In determining whether an Administrative Patent Judge (including a member of the CJP), statutory PTAB member, or any other USPTO employee has a conflict of interest and therefore cannot participate in the PTAB process for a particular case, the USPTO follows the guidance set forth in the United States Department of Commerce’s Summary of Ethics Rules.
