As PTAB Institution Rates Dip Slightly, USPTO Releases Slimmed-Down Reform Package

The Patent Trial and Appeal Board (PTAB) instituted trial for 68% of the America Invents Act (AIA) review petitions addressed in Q1 2024, down from that same quarter last year (during which the institution rate was 72%) but up slightly from Q4 2023 (67%).

That slight drop from Q1 2023 comes as the USPTO moves closer to finalizing what could be the first in a series of planned internal reforms. On April 19, the agency released a long-promised Notice of Proposed Rulemaking that includes new rules governing “serial” and “parallel” petitions as well as validity arguments previously addressed by the USPTO, also creating a separate briefing process for discretionary denials and requiring the filing of pre-institution settlement agreements. This proposal covers just a “subset of topics” from an Advance Notice of Proposed Rulemaking that the USPTO released in April 2023 that contemplated a more sweeping set of changes to the PTAB, including the codification and expansion of the Board’s discretionary denial practices under NHK-Fintiv as well as the creation of a standing requirement.

The USPTO later indicated that the earlier proposal was overbroad by design to solicit as much feedback as possible, with Director Kathi Vidal stating that the final proposal would likely be narrower. However, while the April 2024 package fits that description, the USPTO has also indicated that some of the remaining reforms from the April 2023 proposal could still come to pass: The agency stated in its newer proposal that it “continues to consider issuing proposed rules, with associated opportunities to comment, on other topics raised in the ANPRM”. That said, it is not yet clear based on public statements which of those proposals could make the cut.

See RPX Insight for further details on this latest reform initiative. More on the PTAB, including a series of other recent changes already implemented by the USPTO, can also be found in RPX’s first-quarter review.