USPTO Guidance for Dealing with SAS Decision

by Dennis Crouch

The US Supreme Court not long ago decided SAS Institute Inc. v. Iancu (U.S. Apr. 24, 2018), holding that USPTO has been improperly issuing “partial-institution” and holding AIA trials on only a subset of challenged statements. The USPTO has now issued a just one-web page introductory assistance memorandum for course of action transferring forward.  In accordance to the Memo:

  1. The PTAB will institute as to all statements or none. Therefore heading forward, “if the PTAB institutes a trial, the PTAB will institute on all problems elevated in the petition.”
  2. For pending trials connected with a partial-establishment choice, “the panel could issue an buy supplementing the establishment choice to institute on all problems elevated in the petition. . . . [and] could take even more action to handle the trial proceeding” to take into account the shift. “For case in point, if the panel has instituted a trial and the circumstance is in close proximity to the conclusion of the time allotted for submitting the Patent Proprietor Response, the panel could increase the due day for the Patent Proprietor Response to enable the Patent Proprietor to handle any additional problems extra to the proceeding.”
  3. “It is anticipated that the events will do the job cooperatively … to solve disputes and suggest affordable modifications to the agenda.”
  4. Queries: or “Chat with the Chief” webinar on Monday, April 30, 2018, from noon to 1 pm ET to focus on the SAS choice.

The assistance below will make feeling besides to the extent that the assistance does not look to call for ongoing panels to include the additional challenged statements.  The memo states that “the panel could issue [such] an buy,” it ought to instead call for every single panel to issue this kind of an buy.

Next issue. Even though I hope it was a collaborative energy with PTO management, the assistance below will come from the PTAB.  That remedy matters mainly because the Patent Act specially divides responsibilities between the Director (establishment decisions) and the PTAB (AIA Trials). Even though the Director has delegated his establishment choice position to the PTAB, I don’t know that the Director has delegated authority to afterwards grow the establishment choice.

[Read the Guidance][Link to the upcoming Chat with the Chief]



Dennis Crouch

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