USPTO Issues Advance Notice of Proposed Rulemaking for America Invents Act (AIA) Proceedings Before the Patent Trial and Appeal Board

April 20, 2023

The USPTO today announced Advance Notice of Proposed Rulemaking for PTAB reforms regarding IPRs/PGRs. The proposal related to five areas:

Key Area 1: Better ensure our practices align with the USPTO’s mission to promote and protect innovation and investment, and with the congressional intent behind the AIA to provide a less expensive alternative to district court litigation to resolve certain patentability issues while also protecting against patentee harassment.

Key Area 2: Enhance and build on existing precedent and guidance regarding exercise of Director’s discretion to determine whether to institute an AIA proceeding.

Key Area 3: Provide threshold definitions that apply to one or more categories of petitions subject to discretionary denials, setting forth criteria used to determine “substantial relationship,” “substantial overlap,” and “compelling merits.”

Key Area 4: Provide procedural enhancements.

Key Area 5: Clarify filing requirements for Settlement Agreements.

The USPTO will hold an information session with Director Vidal on May 9, from noon to 1:00 PM EDT. The full text of the notice is here.