Last week the United States Patent and Trademark Office (USPTO) announced that at the direction of USPTO Director Michelle Lee the Office is launching an initiative “to further shape and improve Patent Trial and Appeal Board (PTAB) trial proceedings, particularly inter partes review proceedings.” According to the USPTO, the purpose of the initiative is to ensure that post grant proceedings are both effective and as fair as possible.
The timing of the announcement is curious given that Michelle Lee’s days seem numbered as Director of the Office. As first reported on IPWatchdog.com (and then over 24 hours later relayed by POLITICO to POLITICO Pro subscribers without any mention of IPWatchdog.com), Commerce Secretary Wilbur Ross has interviewed at least three candidates for the position of Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Those receiving interviews were Phil Johnson, former Vice-President for Intellectual Property Strategy & Policy for Johnson & Johnson, Randall Rader, former Chief Judge of the United States Court of Appeals for the Federal Circuit, and an unidentified patent attorney characterized by one source as a dark horse candidate.
Given that Lee’s days may be numbered as Director of the Office some are speculating that the timing of this PTAB initiative may be more than coincidental. Indeed, there is speculation that Lee may be attempting to get out in front of her successor and put whoever is the next Director in a difficult political position. Under this scenario this PTAB initiative would wrap up relatively quickly by DC standards and conclude that little or nothing needs to be done and that PTAB proceedings, including IPR proceedings, are already extremely fair and even-handed, which is of course not true. This speculation is exacerbated by the belief that whoever the next Director is will have a very different view of the PTAB than Lee. However, if Lee concludes everything at the PTAB is fine on the way out the door it might make it politically more difficult for whoever is next to make the type of change required to bring proper balance and fairness to PTAB proceedings.
In any event, according to the USPTO announcement:
This initiative will examine procedures including, but not limited to, procedures relating to multiple petitions, motions to amend, claim construction, and decisions to institute. It will evaluate the input already received from small and large businesses, startups and individual inventors, IP law associations, trade associations, and patent practitioners, and will seek to obtain more feedback regarding potential procedural enhancements.
Coke Morgan Stewart, Senior Advisor to Director Lee, is coordinating this PTAB initiative. Members of the public may submit their ideas regarding PTAB procedural reform to: PTABProceduralReformInitiative@uspto.gov.