Alerts
May 2018
The USPTO's PPAC Quarterly Meeting took place on May 3 at its headquarters in Alexandria, Virginia. Various topics affecting the USPTO, prosecution practice, and PTAB proceedings were discussed as an effort to open dialog between the USPTO and patent stakeholders.  

Highlights of the meeting are detailed below.
 
1. Director Iancu's Policy Priorities -  the USPTO is to be a "Celebration of Innovation"
 
USPTO Director Iancu opened the PPAC Quarterly Public Meeting by outlining the major policies that will be the focus of the USPTO over the coming years under his leadership.  In particular, Director Iancu envisions the USPTO as an agency that will have a "new narrative" going forward – a shift of dialogue and policies to "inspire" the next generation to innovate, which may mean changes to the patent system to "foster growth in the economy." 
 
To that end, Director Iancu acknowledged that the patent system needs more clarity and predictability.  He expects to address this by developing policies that better "define and clarify the analysis Examiners are expected to do" in light of recent court decisions, especially on a timely basis. The USPTO's subject matter memos, such as the recent memo on the Berkheimer decision, will be an ongoing effort by the USPTO to provide clarification of case law as quickly as possible.
 
Director Iancu also addressed post-grant proceedings, saying that post-grant proceedings must be "balanced and fair."  He plans to look at the standards applied (including considering whether different standards between the PTAB and district courts is justified), current amendment processes, and overall post-grant procedures.  He aims to "strike the appropriate balance."
 
Director Iancu also expects to decrease the "gap" between prior art found by Examiners during prosecution, and prior art found during litigation and post-grant proceedings.  He stressed the importance of reviewing prior art search capabilities available to Examiners, and determining whether new resources will be needed to increase those search capabilities including using AI to help conduct the search.  He expects changes to the "front end" prosecution process will result in higher quality patents, which will improve the "back end" process (e.g., patents challenged in IPRs, district courts, etc.). The prior art found in IPR/litigation should be, Director Iancu stressed, largely the same as that found in prosecution.
 
 
2. The USPTO's Push to Clarify Subject Matter Eligibility Questions
 
The USPTO is continuing to take an interest in clarifying subject matter eligibility questions, especially in the prosecution context.  Recently, the subject matter eligibility sections of the MPEP (MPEP 2106) has been updated to be current as of August 2017, and replaces the 2014 Interim Eligibility Guidance (IEG) and its updates.  The USPTO has also implemented a new streamlined analysis in the updated sections for claims "having self-evident eligibility" because they are directed to unambiguous improvements to a technology or computer functionality.   The USPTO reiterated that they are prioritizing how they, as an agency, can provide clarity to § 101 issues. 
 
The USPTO also stressed that the Office's memos are intended to control if released after MPEP updates.  The USPTO is also focused on providing training to Examiners over the memos as quickly as possible.  For example, Examiners are expected to be trained on the Berkheimer memo by the end of May.
 
3. PTAB Post Oil States and SAS Institutes – A Continuing and Evolving Conversation
 
PTAB Chief Judge Ruschke provided an update on PTAB procedures following the Oil States and SAS decisions decided by the US Supreme Court last week.  While Oil States does not affect the workload or procedures of the Board, SAS certainly does.
 
Chief Judge Ruschke stated that the Board reads SAS as a mandate that they must move forward on all claims when instituting an IPR.  However, the Board has also decided to move forward on all challenges raised by the petition, which includes all grounds as well (e.g., “challenges” meaning both claims and grounds).  Thus, for currently pending partial institutions, the Board will issue an order instituting on all challenges, and will invite the parties to meet and confer to terminate certain challenges (although termination is not mandatory).
 
It should be noted, however, that while SAS requires institution on all claims, the grounds requirement may be reevaluated by the Board if resources don’t permit it. The SAS implementation is still a continuing and evolving conversation, and the Board expects it will take about 1-1.5 years for the about 150 currently pending partial institution cases to be resolved in light of SAS.
 
The Board also noted that extensions for IPRs affected by SAS will not automatically be given.  Either party must file a request for a deadline extension or waiver.  They urge that all general and case specific questions be emailed to trials@uspto.gov.