ANPRM an Unnecessary Slog to a Small Rule Package

It has been almost a year since the Patent Trial & Appeal Board (PTAB) released its Advanced Notice of Proposed Rulemaking (ANPRM) on AIA trial practices. As a reminder, the ANPRM was a sprawling collection of rule proposals and requests for public feedback. I previously pointed out that the proposal was unnecessarily ambitious and was destined to be bogged down for proposing to exceed the agency’s regulatory jurisdiction.

Well, the wait is almost over.

The political repercussions of the past year have driven out all controversial proposals of the ANPRM. All that remains today is uneventful procedural codifications, and minor changes in party submission formats. The remaining proposals are entitled: “PTAB Rules of Practice for Briefing Discretionary Denial Issues, and Rules for 325(d) Considerations, Instituting Parallel and Serial Petitions, and Termination Due to Settlement Agreement.” This rule proposal is under review with the Office of Information & Regulatory Affairs (OIRA) of OMB. The actual rule proposals are not yet public, but the agency has commented publicly that the title is very representative of its limited content (i.e., all of the controversial topics have been dropped).

Those staffers that have actually seen the proposal have relayed that it is little more than a modest rule set to address:

  • Separate 314(a) briefing (can move from the petition to a separate, short filing)
  • Codifying that an IDS listing is not the same as consideration on the record for 325(d) purposes (existing practice, although inconsistently applied recently)
  • Codifying existing serial and parallel petition practices (codifying General Plastic)
  • Rules addressing the submission of settlement documents prior to institution

Notably absent are any rules pertaining to Fintiv practices or the many proposals of the ANPRM that were directed to related parties, patents, or prior adjudications. The package will likely remain with OIRA into early March as stakeholders meet with the agency to voice their concerns through the end of February. At some point in March/April the rule package is expected to be released as a formal NPRM. After a period necessary to collect additional comments, the NPRM (and any necessary modifications) will be published as a final rule package. Maybe…the clock on the Vidal administration is ticking.

What happened?

The agency created far more work for itself than necessary by publishing every ill-conceived idea in the ANPRM that it received over the prior years. These ideas were never going to see the light of day as a number were well beyond the power of the agency to promulgate. Adding the imprimatur of the agency to those types of ideas was very unfortunate. This fact was uncomfortably highlighted to the Director in a hearing before the House Judiciary Committee last year. Unraveling that political crisis ate up most of the runway available to the Director to pursue any more than the least controversial of the potential proposals.

The Biden Administration is also approaching an election. The tradition is for the Director to move on (tender resignation) regardless of election outcome. As such, there is simply no time to tackle push-back or controversy — and likely little appetite on either side given the events of the last year.

In 2025 we will likely have a new Director, and perhaps a new Fintiv memo.