[Federal Register Volume 88, Number 193 (Friday, October 6, 2023)]
[Proposed Rules]
[Pages 69578-69583]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-22218]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

37 CFR Part 43

[Docket No. PTO-P-2023-0012]
RIN 0651-AD68


Rules Governing Pre-Issuance Internal Circulation and Review of 
Decisions Within the Patent Trial and Appeal Board

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (``USPTO'' or 
``Office'') proposes regulations to govern the pre-issuance circulation 
and review of decisions within the Patent Trial and Appeal Board 
(``PTAB'' or ``Board''). The Office proposes these provisions to refine 
the current interim process in light of stakeholder feedback received 
in response to a Request for Comments (RFC). This proposed rule 
promotes the efficient delivery of reliable intellectual property 
rights by promoting consistent, clear, and open decision-making 
processes at the PTAB.

DATES: Comments must be received by December 5, 2023 to ensure 
consideration.

ADDRESSES: Comments must be submitted through the Federal eRulemaking 
Portal at www.regulations.gov. To submit comments via the portal, one 
should enter docket number PTO-P-2023-0012 on the homepage and select 
``search.'' The site will provide search results listing all documents 
associated with this docket. Commenters can find a reference to this 
notice and select the ``comment'' icon, complete the required fields, 
and enter or attach their comments. Attachments to electronic comments 
will be accepted in Adobe[supreg] portable document format (PDF) or 
Microsoft Word[supreg] format. Because comments will be made available 
for public inspection, information that the submitter does not desire 
to make public, such as an address or phone number, should not be 
included in the comments.
    Visit the Federal eRulemaking Portal for additional instructions on 
providing comments via the portal. If electronic submission of, or 
access to, comments is not feasible due to a lack of access to a 
computer and/or the internet, please contact the USPTO using the 
contact information below for special instructions.

FOR FURTHER INFORMATION CONTACT: Melissa A. Haapala, Vice Chief 
Administrative Patent Judge, or Stacy B. Margolies, Lead Administrative 
Patent Judge, 571-272-9797.

SUPPLEMENTARY INFORMATION:

Executive Summary

    Purpose: This proposed rule would codify processes and standards to 
govern the internal pre-issuance circulation and review of decisions 
within the PTAB.
    Since May of 2022, the USPTO has been using an interim process for 
PTAB decision circulation and internal PTAB review to promote 
consistent, clear, and open decision-making processes at the USPTO. The 
processes were put in place to support a consistent and clear approach 
to substantive areas of patent law and PTAB-specific procedures, while 
maintaining open decision-making processes. The USPTO subsequently 
issued an RFC seeking public input on these processes. After reviewing 
feedback received from the public in response to the RFC, the USPTO now 
seeks to formalize its processes for circulation and review of 
decisions within the PTAB through notice-and-comment rulemaking.
    This proposed rule provides that the USPTO Director, Deputy 
Director, and Commissioners for Patents and Trademarks are not 
involved, directly or indirectly, in the decision making of panels of 
the PTAB prior to issuance of a decision by the panel. In addition, no 
employee of the Office external to the Board, nor any member of PTAB 
management, is involved, directly or indirectly, in panel decision-
making unless a panel member has requested their input. The adoption of 
any feedback received by the panel is entirely optional and solely 
within the discretion of the panel.
    This proposed rule also sets forth that, if the Office establishes 
procedures governing the internal circulation and review of decisions 
prior to issuance to one or more designated members of the Board, no 
management judge shall participate in any such review, either directly 
or indirectly. The adoption of any feedback received pursuant to such 
review is entirely optional and solely within the discretion of the 
panel.
    Finally, this proposed rule provides that decisions of the Board 
are expected to comport with applicable statutes, regulations, binding 
case law, and written agency or Board policy or guidance, and that 
there is no unwritten agency or Board policy or guidance that is 
binding on any panel of the Board.

Background

    On September 16, 2011, the America Invents Act (AIA) was enacted 
into law (Pub. L. 112-29, 125 Stat. 284 (2011)). The AIA established 
the PTAB, which is made up of administrative patent judges (APJs) and 
four statutory members, namely the USPTO Director, the USPTO Deputy 
Director, the USPTO Commissioner for Patents, and the USPTO 
Commissioner for Trademarks. 35 U.S.C. 6(a). The PTAB hears and decides 
ex parte appeals of adverse decisions by examiners in applications for 
patents; appeals of adverse decisions by examiners in reexamination 
proceedings; and proceedings under the AIA, including inter partes 
reviews, post grant reviews, covered business method (CBM) patent 
reviews,\1\ and derivation proceedings, in panels of at least three 
members. 35 U.S.C. 6(b), (c). Under the statute, the Director 
designates the members of each panel. 35 U.S.C. 6(c). The Director has 
delegated that authority to the Chief

[[Page 69579]]

Judge of the Board. See PTAB Standard Operating Procedure 1 (SOP1), 
Assignment of Judges to Panels, https://www.uspto.gov/sites/default/files/documents/SOP%201%20R15%20FINAL.pdf.
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    \1\ Under section 18 of the AIA, the transitional program for 
post-grant review of CBM patents sunset on September 16, 2020. AIA 
18(a). Although the program has sunset, existing CBM proceedings, 
based on petitions filed before September 16, 2020, remain pending 
on appeal at the Federal Circuit Court of Appeals.
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Interim Process and CJP

    The Office recognizes that it is important that the PTAB maintain a 
consistent and clear approach to substantive areas of patent law and 
PTAB-specific procedures, while maintaining open decision-making 
processes. Since May 2022, the USPTO has been using an interim process 
for PTAB decision circulation and internal PTAB review. See ``Interim 
process for PTAB decision circulation and internal PTAB review,'' 
available at https://www.uspto.gov/interim-process-ptab-decision-circulation-and-internal-ptab-review. That interim process has now been 
replaced by a new Standard Operating Procedure (SOP4), issued 
concurrently with this Notice of Proposed Rulemaking. The process set 
forth in SOP4 is substantially similar to the interim process, except 
for the change described below to the Circulation Judge Pool (CJP) 
review. SOP4 further sets forth additional details requested by 
stakeholders.
    Under the prior interim process, certain categories of PTAB 
decisions were required to be circulated to a pool of non-management 
APJs (the Circulation Judge Pool, also known as CJP) prior to issuance. 
These decisions included all AIA institution decisions; AIA final 
written decisions; AIA decisions on rehearing; inter partes 
reexamination appeal decisions; designated categories of ex parte 
appeal, ex parte reexamination appeal, and reissue appeal decisions; 
and all Board decisions (including AIA and ex parte appeal decisions) 
following a remand from the Federal Circuit. Judges could, at their 
option, circulate other types of decisions for CJP review. In response 
to stakeholder feedback, under the process set forth in SOP4, 
circulation to CJP is now optional.
    The CJP comprises a representative group of non-management APJs who 
collectively have technical/scientific backgrounds and legal experience 
representative of the PTAB judges as a whole. The CJP was modeled after 
both the Federal Circuit's previous circulation to the Senior Technical 
Assistant and the Federal Circuit's 10-day circulation process for 
precedential decisions. See United States Court of Appeals for the 
Federal Circuit, Internal Operating Procedures, Redlined Copy, 18 (Mar. 
1, 2022), available at https://cafc.uscourts.gov/wp-content/uploads/RulesProceduresAndForms/InternalOperatingProcedures/IOPs-Redline-03012022.pdf (describing the previous circulation to the Senior 
Technical Assistant); and United States Court of Appeals for the 
Federal Circuit, Internal Operating Procedures, 10.5 (Mar. 1, 2022), 
available at https://cafc.uscourts.gov/wp-content/uploads/RulesProceduresAndForms/InternalOperatingProcedures/IOPs-03012022.pdf 
(describing the 10-day circulation process for precedential decisions).
    The CJP's role is to provide the panel with information regarding 
potential conflicts or inconsistencies with relevant authority, 
including PTAB precedential decisions, Director guidance memoranda, and 
other written agency or Board policies or guidance. The CJP also 
provides the panel with information regarding potential inconsistencies 
with informative or routine PTAB decisions and suggestions for improved 
readability and stylistic consistency. The panel has the final 
authority and responsibility for the content of a decision and 
determines when and how to incorporate feedback from the CJP. The APJs 
are required to apply pertinent statutes, binding case law, and written 
policy or guidance issued by the Director or the Director's delegate 
that is applicable to PTAB proceedings. All policies or guidance 
applicable to PTAB proceedings that the APJs are required to apply are 
written.
    The CJP may have periodic meetings with PTAB Executive Management 
(i.e., PTAB Chief Judge, Deputy Chief Judge, Vice Chief Judges, Senior 
Lead Judges, and those acting in any of the foregoing positions) to 
discuss issued panel decisions and general areas for potential policy 
clarification. PTAB Executive Management may discuss these issues or 
issued decisions that have issued with the Director for the purposes of 
(i) considering whether to issue new or updated policies or guidance, 
for example, through regulation, precedential or informative decisions, 
and/or a Director guidance memorandum; and (ii) considering sua sponte 
(on the Director's own initiative) Director Review of a decision.
    Under the interim process, any panel member, at their sole 
discretion, could 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. If consulted, PTAB management 
could provide information regarding the consistent application of USPTO 
policy, applicable statutes and regulations, and binding case law. 
Adoption of any suggestions provided by PTAB management based on such 
consultation was optional. Unless consulted by a panel member, PTAB 
management did not make suggestions to the panel regarding the 
substance of any pre-issuance decision, either directly or indirectly 
through the CJP.
    The interim PTAB decision circulation and internal review processes 
promoted decisional consistency and open decision-making processes by 
reinforcing that the adoption of all CJP and requested PTAB management 
feedback is optional, that members of PTAB management did not provide 
feedback on decisions prior to issuance unless they are a panel member 
or a panel member requests such feedback, and that the PTAB panel had 
the final authority and responsibility for the content of a decision. 
Additionally, the processes provided a mechanism by which the Director 
could be made aware of decisions to consider for sua sponte Director 
Review, and of areas to consider for issuing new, or modified, USPTO 
policy to promote the efficient delivery of reliable intellectual 
property rights.
    Furthermore, under both the interim process and SOP4, all 
consultations are covered by conflict of interest policies. If a member 
of the CJP or management has a conflict of interest, they are required 
to notify the other members of their respective team and recuse 
themselves from any discussion or analysis of that decision. In 
determining whether a conflict of interest exists, the USPTO follows 
the guidance set forth in the Standards of Ethical Conduct for 
Employees of the Executive Branch at 5 CFR part 2635 and will consult 
with the Department of Commerce Ethics Law and Programs Office, as 
necessary, to resolve any questions pertaining to conflicts of 
interest.

Request for Comments

    On July 20, 2022, the USPTO issued an RFC on Director Review, 
Precedential Opinion Panel Review, and Internal Circulation and Review 
of Patent Trial and Appeal Board Decisions (RFC), to obtain public 
feedback on the interim PTAB decision circulation and internal review 
processes. See 87 FR 43249-52. The USPTO received over 4,300 comments 
from a wide range of stakeholders, including individuals, associations, 
and companies, on all aspects of the RFC including specific responses 
to question 13 (which asked if any changes should be made to the 
interim PTAB decision circulation and review process) and question 14 
(which asked what other considerations should be taken into

[[Page 69580]]

account with respect to the interim PTAB decision circulation and 
internal review process).
    Several commenters emphasized the need for judicial independence 
and review processes that reduce influence by USPTO senior management 
on PTAB panels. Other commenters emphasized the value of transparency 
in the PTAB's processes and requested that further details on the CJP 
be made public. One representative commenter stated that, even when the 
CJP reviews a decision prior to issuance, it should not discuss the 
decision with PTAB management until the decision is issued by the 
panel. Another commenter believed that the value of the CJP may be 
outweighed by concerns with undue pre-issuance influence by the 
Director and suggested abandoning the CJP procedure in favor of 
entrusting the APJs and the Director Review process with maintaining 
consistency and quality of PTAB decisions.

Proposed Provisions Governing Pre-Issuance Internal Circulation and 
Review

    In view of the comments and the USPTO's further experience with AIA 
proceedings, the USPTO undertakes this rulemaking to make policy 
changes to the processes and standards that govern the internal pre-
issuance circulation and review of decisions within the PTAB. This 
rulemaking is consistent with comments received from stakeholders 
expressing a preference that key policy changes be made and formalized 
through rulemaking. This proposed rule seeks to promote consistent, 
clear, and open decision-making processes while protecting judicial 
independence and increasing transparency of USPTO processes. For 
example, this proposed rule would prohibit PTAB management review of 
decisions prior to issuance by the panel (absent a request by a panel 
member, at the panel member's sole discretion). The proposed rule also 
provides that, if the Office establishes procedures governing the 
internal circulation and review of decisions prior to issuance (such as 
CJP review), no management judge shall participate directly or 
indirectly in any such review. Adopting the suggestion of stakeholders, 
this proposed rule further specifies that the group of reviewing non-
management judges (e.g., CJP members) would be prohibited from 
discussing any reviewed decision with PTAB management prior to 
issuance.
    In response to public feedback requesting additional information on 
the processes, the USPTO has provided further details regarding the 
internal circulation process and the structure of the reviewing body of 
non-management judges (currently embodied by the CJP) by issuing a 
Standard Operating Procedure (SOP4) concurrently with the publication 
of this NPRM. The processes set forth in the SOP4 replace the former 
interim process for PTAB decision circulation described above. The 
Office may consider further refinements or modifications to the SOP4 in 
view of the comments received from the public in response to this NPRM.
    The USPTO proposes to add part 43, which provides for new 
regulations governing the pre-issuance circulation and review of 
decisions within the PTAB. A section-by-section discussion of the new 
provisions is as follows:
    Section 43.1: Proposed Sec.  43.1 would set forth general policy 
considerations for Part 43 and define the scope of the rules.
    Section 43.2: Proposed Sec.  43.2 would set forth definitions for 
terms used in Part 43.
    The proposed definition of Board would refer to the Patent Trial 
and Appeal Board.
    The proposed definition of decision would refer to any decision, 
order, opinion, or other written work product intended for entry into 
the record of a Board proceeding.
    The proposed definition of Director would refer to the Under 
Secretary of Commerce for Intellectual Property and Director of the 
United States Patent and Trademark Office or an individual serving as 
Acting Director or performing the functions and duties of the Director.
    The proposed definition of Deputy Director would refer to the 
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office or an 
individual serving as Acting Deputy Director.
    The proposed definitions of Commissioner for Patents and 
Commissioner for Trademarks would be the positions defined in 35 U.S.C. 
3(b)(2) or an individual acting in the capacity of one of those 
positions.
    The proposed definition of issuance would refer to the entry of a 
decision into the record of a Board proceeding.
    The proposed definition of Management Judge would encompass the 
Chief Administrative Patent Judge, the Deputy Chief Administrative 
Patent Judge, a Vice Chief Administrative Patent Judge, a Senior Lead 
Administrative Patent Judge, and/or a Lead Administrative Patent Judge, 
including individuals who serve in these positions in an acting 
capacity. The definition is also intended to capture any other 
Administrative Patent Judge who, as part of their duties, supervises 
the work of other Administrative Patent Judges or is responsible for 
reviewing the performance of other Administrative Patent Judges.
    The proposed definition of panel would refer to the members of the 
Board assigned to a proceeding pursuant to the Board's Standard 
Operating Procedure 1.
    The proposed definition of proceeding would refer to an appeal or 
contested case under Part 41 or trial proceeding under Part 42.
    Section 43.3: Proposed Sec.  43.3 would specify that the Director 
of the USPTO and other high-level officers are not involved in panel 
decisions prior to their issuance, either directly or indirectly. The 
provision ensures the judicial independence of Board panels by 
insulating panel decision-making from the policy-setting functions of 
Office leadership.
    Proposed Sec.  43.3(a) would prohibit the Director, Deputy 
Director, Commissioner for Patents, and Commissioner for Trademarks 
from communicating, directly or indirectly, with any member of a panel 
regarding a decision, prior to issuance of that decision by the panel.
    Proposed Sec.  43.3(b) would provide that paragraph (a) would not 
apply to any proceeding in which the named individual is a member of 
the panel and would also specify that when sitting as a member of a 
panel, the individual is a coequal member of the panel.
    Proposed Sec.  43.3(c) would clarify that nothing in Sec.  43.3 
shall prevent the Director or their delegate from communicating with a 
panel as to resource needs or the procedural status of any proceeding. 
This provision is intended to permit Office leadership to engage in 
communications of a purely administrative or logistical nature that are 
necessary to ensure the effective and efficient administration of the 
Office. Communications with a panel attempting to influence or direct 
the outcome or reasoning of any decision would not be permitted under 
this provision.
    Proposed Sec.  43.3(d) would specifically delegate to the Chief 
Administrative Patent Judge the Director's power to designate and re-
designate panels of the Board under 35 U.S.C. 6(c). The proposed rule 
would also prohibit the Director from directing or otherwise 
influencing the paneling or repaneling of any proceeding prior to 
issuance of the panel decision. The proposed rule permits the Director 
to issue generally applicable paneling guidance to be applied to 
proceedings before the Board,

[[Page 69581]]

and to direct the repaneling of a proceeding according to that 
generally applicable guidance when the Director is reviewing or 
rehearing an issued panel decision.
    Section 43.4: Proposed Sec.  43.4 would govern involvement by Board 
management or Office employees outside the Board in the review and 
circulation of decisions prior to issuance. The provision ensures 
judicial independence of Board panels while permitting a panel member 
to request management input on issues when desired.
    Proposed Sec.  43.4(a) would prohibit any Management Judge or 
employee of the Office external to the Board from initiating 
communication, directly or through intermediaries, with any member of a 
panel regarding a decision, prior to issuance of that decision.
    Proposed Sec.  43.4(b) would provide an exception to paragraph (a) 
in the event a member of the panel requests input from a Management 
Judge prior to issuance of the decision. The proposed rule clarifies 
that requesting input is optional and the decision to request input is 
solely within the discretion of an individual panel member.
    Proposed Sec.  43.4(c) would specify that it is within the panel's 
sole discretion to adopt any edits, suggestions, or feedback provided 
by a Management Judge in response to a request for input, and the panel 
has the final authority and responsibility for the content of a 
decision.
    Proposed Sec.  43.4(d) would provide that paragraph (a) would not 
apply to a Management Judge who is a member of the panel and would 
specify that when sitting as a member of a panel, a Management Judge is 
a coequal member of the panel and exercises no review authority over 
the decision.
    Proposed Sec.  43.4(e) would clarify that nothing in Sec.  43.4 
shall prevent a Management Judge from communicating with a panel as to 
resource needs or the procedural status of any proceeding. This 
provision is intended to permit Board management to engage in 
communications of a purely administrative or logistical nature that are 
necessary to ensure the effective and efficient administration of the 
Board. Communications with a panel attempting to influence or direct 
the outcome or reasoning of any decision would not be permitted under 
this provision.
    Section 43.5: Proposed Sec.  43.5 would govern procedures for 
circulation of decisions to, and review of decisions by, a designated 
group of non-Management Judges if the Office sets forth procedures for 
such circulation. The provision promotes consistent, clear, and open 
decision-making by permitting peer review of decisions prior to 
issuance, while respecting the judicial independence of panels by 
providing that all feedback from such review is optional and at the 
panel's sole discretion to adopt.
    Proposed Sec.  43.5(a) would provide that no Management Judge shall 
participate in any such circulation and review procedures. The proposed 
rule further provides that if a decision is circulated to non-
Management Judges for review prior to issuance, the reviewing judges 
will not discuss the substance of the circulated decision with a 
Management Judge prior to issuance by the panel, except with a 
Management Judge who is a member of the panel.
    Proposed Sec.  43.5(b) would specify that any edits, suggestions, 
or feedback provided, following circulation and review to a non-
Management Judge, are optional and in the sole discretion of a panel to 
accept. The proposed rule also states that the panel has final 
authority and responsibility for the content of a decision and 
determines whether and how to incorporate any feedback provided.
    Section 43.6: Proposed Sec.  43.6 would provide that all decisions 
of the Board are expected to comport with all applicable statutes, 
regulations, binding case law, and written agency policy or guidance 
applicable to Board proceedings. This proposed provision would also 
specifically state that there is no unwritten agency or Board policy or 
guidance that is binding on any panel of the Board. The proposed 
provision would further require that all written policy or guidance 
binding on panels of the Board shall be made public.

Rulemaking Considerations

    A. Administrative Procedure Act: The changes proposed by this 
rulemaking involve rules of agency practice and procedure, and/or 
interpretive rules. See Perez v. Mortg. Bankers Ass'n, 135 S.Ct 1199, 
1204 (2015) (Interpretive rules ``advise the public of the agency's 
construction of the statutes and rules which it administers.'' 
(citation and internal quotation marks omitted)); Nat'l Org. of 
Veterans' Advocates, Inc. v. Sec'y of Veterans Affairs, 260 F.3d 1365, 
1375 (Fed. Cir. 2001) (Rule that clarifies interpretation of a statute 
is interpretive.).
    Accordingly, prior notice and opportunity for public comment are 
not required pursuant to 5 U.S.C. 553(b) or (c) or any other law. See 
Perez, 135 S. Ct. 1199, 1206 (Notice-and-comment procedures are 
required neither when an agency ``issue[s] an initial interpretive 
rule'' nor ``when it amends or repeals that interpretive rule.''); 
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) 
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not 
require notice and comment rulemaking for ``interpretative rules, 
general statements of policy, or rules of agency organization, 
procedure, or practice'') (quoting 5 U.S.C. 553(b)(3)(A)).
    The Office, nevertheless, is publishing this proposed rule for 
comment to seek the benefit of the public's views on the Office's 
proposed changes as set forth herein.
    B. Regulatory Flexibility Act: For the reasons set forth herein, 
the Senior Counsel for Regulatory and Legislative Affairs, Office of 
General Law, United States Patent and Trademark Office has certified to 
the Chief Counsel for Advocacy of the Small Business Administration 
that changes set forth in this notice of proposed rulemaking would not 
have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b).
    The changes in this notice of proposed rulemaking are to set forth 
expressly the rules governing the circulation and review of decisions 
of the Board prior to issuance by a panel. The changes do not create 
additional procedures or requirements or impose any additional 
compliance measures on any party, nor do these changes cause any party 
to incur additional cost. Therefore, any requirements resulting from 
these proposed changes are of minimal or no additional burden to those 
practicing before the Board.
    For the foregoing reasons, the proposed changes in this notice of 
proposed rulemaking would not have a significant economic impact on a 
substantial number of small entities.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866 (Sept. 30, 1993), as amended by Executive Order 
14094 (April 6, 2023).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563 (Jan. 18, 
2011). Specifically, the Office has, to the extent feasible and 
applicable: (1) made a reasoned determination that the benefits justify 
the costs of the rules; (2) tailored the rules to impose the least 
burden on society consistent with obtaining the regulatory objectives; 
(3) selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the

[[Page 69582]]

public in an open exchange of information and perspectives among 
experts in relevant disciplines, affected stakeholders in the private 
sector and the public as a whole, and provided on-line access to the 
rulemaking docket; (7) attempted to promote coordination, 
simplification, and harmonization across government agencies and 
identified goals designed to promote innovation; (8) considered 
approaches that reduce burdens and maintain flexibility and freedom of 
choice for the public; and (9) ensured the objectivity of scientific 
and technological information and processes.
    E. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO 
will submit a report containing the rule and other required information 
to the United States Senate, the United States House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this notice of proposed 
rulemaking are not expected to result in an annual effect on the 
economy of 100 million dollars or more, a major increase in costs or 
prices, or significant adverse effects on competition, employment, 
investment, productivity, innovation, or the ability of United States-
based enterprises to compete with foreign-based enterprises in domestic 
and export markets. Therefore, this rulemaking is not a ``major rule'' 
as defined in 5 U.S.C. 804(2).
    L. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this notice of proposed rulemaking do not involve a Federal 
intergovernmental mandate that will result in the expenditure by State, 
local, and tribal governments, in the aggregate, of 100 million dollars 
(as adjusted) or more in any one year, or a Federal private sector 
mandate that will result in the expenditure by the private sector of 
100 million dollars (as adjusted) or more in any one year, and will not 
significantly or uniquely affect small governments. Therefore, no 
actions are necessary under the provisions of the Unfunded Mandates 
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
    M. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    N. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions which involve the use of 
technical standards.
    O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 
U.S.C. 3501-3549) requires that the Office consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This proposed rulemaking does not involve an information 
collection requirement that is subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501-3549). This rulemaking does not add any additional 
information requirements or fees for parties before the Board.
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall any person be subject to, a penalty for 
failure to comply with a collection of information subject to the 
requirements of the Paperwork Reduction Act unless that collection of 
information displays a currently valid OMB control number.
    P. E-Government Act Compliance: The USPTO is committed to 
compliance with the E-Government Act to promote the use of the internet 
and other information technologies, to provide increased opportunities 
for citizen access to Government information and services, and for 
other purposes.

List of Subjects in 37 CFR Part 43

    Administrative practice and procedure.

    For the reasons set forth in the preamble, the USPTO proposes to 
amend title 37 as follows:

0
1. Add part 43 to read as follows:

PART 43-- DECISION CIRCULATION AND REVIEW WITHIN THE PATENT TRIAL 
AND APPEAL BOARD

Sec.
43.1 Policy.
43.2 Definitions.
43.3 No Pre-Issuance Director Involvement in Board Decisions.
43.4 Limited Pre-Issuance Management Involvement in Decisions.
43.5 Review of Decisions by Non-Management Judges.
43.6 Controlling Legal Authority; No Unwritten or Non-Public Binding 
Policy or Guidance.

    Authority:  35 U.S.C. 2(b)(2), 6, 134, 135, 311, 316, 321, and 
326; Pub. L. 112-29, 125 Stat. 284; and Pub. L. 112-274, 126 Stat. 
2456.


Sec.  43.1   Policy.

    Scope. This Part sets forth procedures for the pre-issuance 
circulation and review within the Patent Trial and Appeal Board of 
draft panel decisions rendered in proceedings pending under Parts 41 
and 42 of this chapter and sets forth the controlling legal authority, 
policy, and guidance applicable to the decisions of the Board.


Sec.  43.2   Definitions.

    The following definitions apply to this part:
    Board means the Patent Trial and Appeal Board.
    Decision means any decision, order, opinion, or other written work 
product intended for entry into the record of a Board proceeding.
    Director means the Under Secretary of Commerce for Intellectual 
Property and Director of the United States Patent and Trademark Office, 
or an individual serving as Acting Director or performing the functions 
and duties of the Director.

[[Page 69583]]

    Deputy Director means the Deputy Under Secretary of Commerce for 
Intellectual Property and Deputy Director of the United States Patent 
and Trademark Office, or an individual serving as Acting Deputy 
Director.
    Commissioner for Patents and Commissioner for Trademarks mean the 
positions defined in 35 U.S.C. 3(b)(2), or an individual acting in the 
capacity of one of those positions.
    Issuance means the entry of a decision into the record of a Board 
proceeding.
    Management Judge means the Chief Administrative Patent Judge, the 
Deputy Chief Administrative Patent Judge, a Vice Chief Administrative 
Patent Judge, a Senior Lead Administrative Patent Judge, a Lead 
Administrative Patent Judge, including individuals who serve in these 
positions in an acting capacity, or any other Administrative Patent 
Judge who, as part of their duties, supervises the work of other 
Administrative Patent Judges or is responsible for reviewing the 
performance of other Administrative Patent Judges.
    Panel means the members of the Board assigned to a proceeding 
pursuant to the Board's Standard Operating Procedure 1.
    Proceeding means an appeal or contested case under Part 41, or 
trial proceeding under Part 42.


Sec.  43.3   No Pre-Issuance Director Involvement in Panel Decisions.

    (a) Prior to issuance of a decision by the panel, the Director, 
Deputy Director, Commissioner for Patents, and Commissioner for 
Trademarks shall not communicate, directly or through intermediaries, 
with any member of the panel regarding the decision.
    (b) The prohibition of paragraph (a) shall not apply to any 
proceeding in which the individual is a member of the panel. When 
sitting as a member of a panel, the Director or other individual listed 
in paragraph (a) is a coequal member of the panel and exercises no 
review authority over the proceeding prior to the issuance of the 
panel's decision on the merits.
    (c) Nothing in this section shall prevent the Director or delegate 
from communicating with a panel as to resource needs or the procedural 
status of any proceeding pending before the Board.
    (d) The Chief Administrative Patent Judge or delegates of the Chief 
Administrative Patent Judge shall designate panels of the Board on 
behalf of the Director. The Director may issue generally applicable 
paneling guidance to be applied to proceedings before the Board. The 
Director shall not direct or otherwise influence the paneling or 
repaneling of any specific proceeding prior to issuance of the panel 
decision. When reviewing or rehearing an issued panel decision, the 
Director may direct the repaneling of the proceeding in a manner 
consistent with PTAB paneling guidance, through an Order entered into 
the record.


Sec.  43.4   Limited Pre-Issuance Management Involvement in Decisions.

    (a) Except as requested pursuant to paragraph (b) or permitted 
under paragraph (d) or (e), prior to issuance of a decision by the 
panel, no Management Judge or employee of the Office external to the 
Board shall initiate communication, directly or through intermediaries, 
with any member of a panel regarding a decision.
    (b) Any individual panel member may request that one or more 
Management Judges provide input on a decision prior to issuance. The 
choice to request input is optional and solely within the discretion of 
an individual panel member.
    (c) It is within the sole discretion of the panel to adopt any 
edits, suggestions, or feedback provided to the panel by a Management 
Judge as part of a review requested under paragraph (b). The panel has 
final authority and responsibility for the content of a decision and 
determines whether and how to incorporate any feedback requested under 
paragraph (b).
    (d) The prohibition of paragraph (a) shall not apply to any 
Management Judge who is a member of the panel. When sitting as a member 
of a panel, a Management Judge is a coequal member of the panel and 
exercises no review authority over the proceeding prior to the issuance 
of the panel's decision on the merits.
    (e) Nothing in this section shall prevent a Management Judge from 
communicating with a panel as to resource needs or the procedural 
status of any case pending before the Board.


Sec.  43.5   Review of Decisions by Non-Management Judges.

    If the Office establishes procedures governing the internal 
circulation and review of decisions prior to issuance to one or more 
designated members of the Board:
    (a) No Management Judge shall participate directly or indirectly in 
any such review and the reviewing non-Management judges shall not 
discuss the substance of any circulated decision with a Management 
Judge prior to issuance of the decision, except with a Management Judge 
who is a member of the panel; and
    (b) Any edits, suggestions, or feedback provided to the panel 
pursuant to such circulation and review are optional and in the sole 
discretion of the panel to accept. The panel has final authority and 
responsibility for the content of a decision and determines whether and 
how to incorporate any feedback provided.


Sec.  43.6   Controlling Legal Authority; No Unwritten or Non-Public 
Binding Policy or Guidance.

    Notwithstanding any other provision of this Part, all decisions of 
the Board are expected to comport with all applicable statutes, 
regulations, binding case law, and written agency policy and guidance 
applicable to Board proceedings. There shall be no unwritten agency or 
Board policy or guidance that is binding on any panel of the Board. All 
written policy and guidance binding on panels of the Board shall be 
made public.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2023-22218 Filed 10-5-23; 8:45 am]
BILLING CODE 3510-16-P