USPTO Lists Changes To Post-Grant Proceedings After This Week’s SAS Decision

The United States Patent and Trademark Office has issued guidance on changes to post-grant proceedings following the 24 April decision by the US Supreme Court in the SAS Institute v Iancu case. The Court ruled that the USPTO must decide the patentability of each claim that is challenged in petitions for inter partes review.

The USPTO guidance is available here. The Supreme Court case is available here.

Among the changes, the USPTO guidance states:

“The PTAB will continue to assess the impact of this decision on its operations and will provide further guidance in the future if appropriate.

As required by the decision, the PTAB will institute as to all claims or none. At this time, if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.

For pending trials in which a panel has instituted trial on all of the challenges raised in the petition, the panel will continue with the proceeding in the normal course. By contrast, for pending trials in which a panel has instituted trial only on some of the challenges raised in the petition (as opposed to all challenges raised in the petition), the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.

Additionally, for pending trials in which a panel enters an order supplementing the institution decision pursuant to this notice, the panel may take further action to manage the trial proceeding, including, for example, permitting additional time, briefing, discovery, and/or oral argument, depending on various circumstances and the stage of the proceeding.”

…

“The final written decision will address, to the extent claims are still pending at the time of decision, all patent claims challenged by the petitioner and all new claims added through the amendment process.

If parties have any questions about the impacts of the SAS decision, the parties may contact the panel (if case-specific) or submit questions in writing to the Board’s Trials@uspto.gov (link sends e-mail) email box (if general).

The PTAB will host a “Chat with the Chief” webinar on Monday, April 30, 2018, from noon to 1 p.m. ET to discuss the SAS decision, its impacts on AIA trial proceedings, and answer questions.”