March 14, 2019

Bob Stoll Critiques the USPTO’s First Precedential Opinion Panel Decision in IPWatchdog

Washington, D.C., partner and co-chair of the Intellectual Property Group Bob Stoll was quoted in the IPWatchdog article “USPTO Precedential Opinion Panel Delivers Lukewarm Attempt to Streamline PTAB Policy.” The article reports on the first decision made by the United States Patent and Trademark Office’s (USPTO’s) Precedential Opinion Panel (POP), consisting of USPTO Director Andrei Iancu, Commissioner for Patents Drew Hirshfeld, and Chief Judge for the Patent Trial and Appeal Board Scott Boalick.

The decision held that (1) a petitioner may be joined to a proceeding in which it is already a party, (2) the Board has discretion to allow joiner of new issues in an existing proceeding, and (3) the existence of a time bar under 35 U.S.C. § 315(b) is one of several factors to consider when exercising this discretion. However the POP emphasized that such discretion should be used only “where fairness requires it and to avoid undue prejudice to a party.”

“The first decision of the POP is a good one!” said Bob. “But the time-bar can be a factor considered when the Director uses his discretion to allow joinder.… Also, the POP providing guidance is one way to inform the patent community, but the America Invents Act (AIA) did give Director Iancu substantive rulemaking authority with respect to many of the PTAB procedures, and that process is a better way to go.”

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