USPTO's new system of "temporary process" for patent reexamination

Recently, the United States Patent and Trademark Office (USPTO) issued a memorandum outlining the temporary process for the Patent Trial and Appeal Board (PTAB) to initiate AIA proceedings. This process is designed to effectively manage the workload of the PTAB and improve its efficiency. The following are the main contents of the process:

Dual-track review process

• The decision to initiate an AIA proceeding will be based on a two-track system, considering discretionary factors and substantive and other statutory factors.
• This process allows applicants to submit separate briefs on discretionary factors and substantive factors, as well as other statutory factors.

Division of responsibilities for processes and decision-making

• After the PTAB receives the briefs on the discretionary and substantive factors, the Director of the USPTO, with the assistance of at least three PTAB judges, will evaluate whether it can exercise discretion to deny the initiation of the proceeding. If there are no grounds for discretionary denial, a substantive review will be conducted by a three-judge panel of the PTAB.

The new process is designed to better manage the PTAB’s workload, reduce the pendency of ex parte appeals, and ensure consistency in decisions to initiate AIA proceedings. This process is effective immediately and applies to all cases in which patent owners have not yet filed a preliminary response.

The new process may affect the rate and speed of initiation of AIA proceedings, thereby affecting the overall patent litigation timeline. Companies should pay close attention to these changes to adjust client advice and litigation strategies.

Beijing Yezhima will continue to closely monitor the implementation effects of these processes so as to flexibly adjust our patent operation strategies and help our clients gain advantages in the rapidly changing intellectual property environment.