IOP: Processing Procedures for Ex Parte Appeals

This Internal Operating Procedure describes how Administrative Patent Judges prepare, circulate, and finalize opinions and related materials in ex parte appeals, including paralegal review and co-panelist review. It formalizes current Board practice, requires a three-judge case conference and paralegal review of all decisions (absent lead judge authorization in rare, exceptional circumstances), and sets file-naming and workflow conventions. The IOP is an internal norm for administering the Board, and it states that it does not create any legally enforceable rights. Appellants and applicants gain visibility into how a panel handles an appeal: a three-judge conference early in decision-making, paralegal review of every decision, and P-TACTS-based circulation before mailing. It also notes that a rehearing decision is treated like a new case for circulation and processing, and that errata or vacatur of a recently mailed decision are requested through the PTAB Appeals Admin mailbox. The document points to Standard Operating Procedure 1 (SOP1) for paneling, the PTAB Style Guide for format and new evidence, and a former version of Standard Operating Procedure 3 (Interim Revision 2) as the source of some content. WHAT IT DOES: Sets internal steps for paneled ex parte appeals. Paneling is generally by paneling staff under SOP1, with recusals, unavailability, hearing postponements, panel order changes, related appeals and other assignment changes handled through Appeals Paneling staff or the Lead Judge. APJ1 schedules a three-judge conference (audio or video), and the authoring judge then drafts the opinion and submits it in P-TACTS for paralegal review. The authoring judge accepts or rejects paralegal changes, but may not reject changes based on mandatory Style Guide requirements. Co-panelists review through P-TACTS, and approval for mailing should be completed in P-TACTS. The IOP also covers errata or vacatur requests, rehearing decisions, file naming and S:\ drive locations (fd, rm, rh, dm, od, pt, mc codes; draft and circ suffixes), and review of oral hearing transcripts. WHO AND WHEN: Applies to Administrative Patent Judges, paralegals and Board staff handling ex parte appeals at the PTAB. The document is dated July 17, 2023 and describes current procedures. It may also serve as an onboarding resource for new judges. The three-judge conferencing procedure may be changed by the Chief Judge if there is a change in the Board's inventory, pendency, or other circumstance. KEY QUOTE: "The case conference shall be a three-judge conference." (Section I.H, p. 3) EARLIER GUIDANCE AFFECTED: Some of the information was contained in a former version of Standard Operating Procedure 3 (Interim Revision 2), Board of Patent Appeals and Interferences (CJ Michael Fleming, March 30, 2010); the IOP states that it maintains and reflects current procedures. It also refers to Standard Operating Procedure 1 (SOP1) for paneling and to the PTAB Style Guide. The document does not state that it rescinds anything. PRACTICE TIP: Do not treat this IOP as a source of enforceable rights, since it says it creates none. Appeal practitioners should instead rely on it only to understand Board workflow, such as that every decision gets paralegal review and a three-judge conference, and keep their own filings and rehearing requests squarely on the merits and the governing rules.