Patent Trial and Appeal Board: Increased Transparency Needed in Oversight of Judicial Decision-Making
Fast Facts
The U.S. Patent and Trademark Office's Patent Trial and Appeal Board was formed in 2012 as an alternative to federal courts for patent disputes. There is the potential for political-appointee office directors to influence judicial decisions.
Our review of oversight at the board and the independence of its judges found, for example, that:
- 75% of board judges who answered our survey said the oversight practiced by office directors and board management has affected their independence
- Stakeholders were generally unaware of how office directors and board management oversee judges' decisions
We made recommendations to increase transparency.
U.S. Patent and Trademark Office Madison Building at the headquarters campus in Alexandria, VA
Highlights
What GAO Found
In a GAO survey of Patent Trial and Appeal Board (PTAB) judges conducted from January to February 2022, the majority of judges (75 percent) responded that oversight practiced by U.S. Patent and Trademark Office (USPTO) directors and PTAB management has affected their independence. Of those who reported working on America Invents Act (AIA) proceedings, the majority of judges (67 percent) GAO surveyed reported feeling pressure to change or modify an aspect of their decision in an AIA proceeding based on Management Review. On the other hand, some judges we interviewed stated that management did not get involved in most cases, and when they did they primarily focused on certain issues, such as eligibility for an AIA proceeding. Such involvement may have limited the number of AIA proceedings initiated. Some judges also noted it was not always clear who in management reviewed draft decisions and whether comments were mandatory.
In May 2022, PTAB implemented new interim oversight procedures, which made Management Review optional, and clarified that the USPTO Director would not be involved in decision-making prior to issuance. These changes could help alleviate judges' concerns, if finalized and clearly communicated in accordance with USPTO strategic plan goals and federal internal control standards.
Selected Practices to Oversee or Review Patent Trial and Appeal Board (PTAB) Decisions
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America Invents Act (AIA) Review Committee (ARC) |
A group of volunteer judges conducted pre-issuance peer review of AIA draft decisions and identified decisions needing Management Review. ARC was replaced in May 2022 by a new interim review procedure in which the USPTO director and PTAB management are not involved. |
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Management Review |
PTAB management conducted pre-issuance review of selected draft decisions. These reviews were required for draft decisions on important issues of interest, such as certain new legal or policy areas that were inconsistent with other PTAB decisions or USPTO guidance. This review now only takes place at judges' request. |
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Interim Director Review |
These reviews were created in 2021 to formalize the USPTO Director's authority to review PTAB decisions. They allow the director to reconsider already issued decisions. |
Source: GAO analysis of information from the U.S Patent and Trademark Office (USPTO). | GAO-23-105336
Stakeholders GAO spoke with were generally unaware of the methods USPTO and PTAB management uses to oversee judges' decisions. Some former judges who currently represent parties before the PTAB suggested that outside stakeholders—including parties to the cases—would not likely know the extent to which directors or PTAB management had influenced or changed aspects of an AIA proceeding, particularly if it had been through Management Review. In addition, some judges noted that management guidance sometimes affected an aspect of their decision, but that was not always transparent to the public or parties to the case. According to one judge, insight into the differing views and legal reasoning on a case can help parties decide whether to appeal or to request Interim Director Review.
PTAB's May 2022 interim review procedures could improve transparency about its oversight practices if finalized and procedures are made publicly available, helping to meet USPTO's strategic goal of improving stakeholder engagement.
Why GAO Did This Study
Since its creation in 2012 by the AIA, PTAB, an adjudicative body within the USPTO, has offered an alternative to the federal courts for settling certain patentability disputes. However, some participants in PTAB proceedings have raised concerns about whether PTAB management or the USPTO Director have used their oversight authority to influence judges' decision-making. The Supreme Court ruled in 2021 that the Director should have the ability to review judges' final decisions in certain proceedings.
This report examines, among other things, (1) PTAB judges' perspectives on PTAB oversight practices, including the effects on their deliberations and decisions, and (2) selected stakeholders' and judges' perspectives on the public transparency of PTAB proceedings. GAO conducted a survey of all non-management and lead PTAB judges and received 204 responses, for an 87 percent response rate. GAO also interviewed PTAB officials and stakeholders—including parties to PTAB proceedings, and current and former judges.
Recommendations
GAO is making four recommendations to USPTO to increase transparency—including specifying in finalized policies PTAB management and USPTO Director roles in internal oversight processes and circumstances in which judges are required to incorporate management comments. GAO is also recommending that PTAB take additional steps to improve stakeholder awareness of oversight practices. USPTO concurred with these recommendations and is planning or taking actions to implement them.
Recommendations for Executive Action
| Agency Affected | Recommendation | Status |
|---|---|---|
| Patent and Trademark Office | When finalizing policy for all internal review processes—such as Management Review and the interim process for internal review and decision circulation—the USPTO Director should clarify these policies, including specifying: 1. what, if any, role PTAB management and/or the Director has in these processes—including who reviews the draft decisions and provides comments; 2. the circumstances in which comments would be optional or mandatory for a panel to incorporate; and 3. the extent to which, if at all, following or not following comments may have an effect on a judge's performance review (Recommendation 1) |
On October 5, 2023, the USPTO publicly issued Standard Operating Procedure 4 (SOP4), "Procedure for Pre-Issuance Optional Decision Review." Following this, the USPTO issued a final rule on June 12, 2024 on "Rules Governing Pre-Issuance Internal Circulation and Review of Decisions Within the Patent Trial and Appeal Board." The final rule and SOP state that Director and other management are not involved, directly or indirectly, in PTAB panel decisions. Further the rule and SOP state that no one outside of PTAB will participate in decision reviews and that feedback received is optional and at the discretion of the panel. Further, the SOP states that failure to incorporate feedback from pre-issuance reviews of decisions has no effect on PTAB judge's performance review.
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| Patent and Trademark Office | The USPTO Director—in coordination with PTAB management—should take steps to improve internal communication with judges to promote transparency and openness by: 1. Increasing direct communication between the USPTO Director and PTAB judges regarding USPTO/PTAB policies, expectations, and operations; 2. Committing to providing, when applicable, written documentation to accompany verbal communication of a desired change or action; and 3. Creating a central repository—such as a PTAB-specific intranet page—for all important information judges need to perform their duties—including up-to-date written documentation of all policy documents, directives, announcements, information on changes, upcoming deadlines and requirements (Recommendation 2). |
According to information provided by USPTO, including documentation, the agency established an Employee Feedback Portal where judges can directly share input with the Director, established periodic small group listening sessions and town halls between the Director and judges, and, in May 2023, rolled out an internal SharePoint site to store important and up-to-date written information that judges need to perform their duties.
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| Patent and Trademark Office | The USPTO Director—in coordination with PTAB management—should take additional steps to improve communication of the oversight practices used within PTAB with stakeholders and parties—including making public any policies, directives, or guidance judges are required to follow that may have a substantive effect on the decision-making process (Recommendation 3). |
In November 2023, PTAB management provided information to the public on the Notice of Proposed Rulemaking on PTAB's pre-issuance internal decision circulation and review as well as its October 2023 Standard Operating Procedure 4 "Procedure for Pre-Issuance Optional Decision Review" through a webinar that was made available on demand publicly on its website. Additionally, the USPTO further publicized its PTAB oversight practices through its June 2024 final rule "Rules Governing Pre-Issuance Internal Circulation and Review of Decisions Within the Patent Trial and Appeal Board."
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| Patent and Trademark Office | The USPTO Director should create written guidance that outlines when and how stakeholders provide feedback on POP decisions and communicate this externally (Recommendation 4). |
As of August 2023, the USPTO updated the public form on the Precedential and Informative Decisions webpage to allow stakeholders to submit comments regarding PTAB precedential or informative decisions, including nominating PTAB decisions for designation or de-designation.
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