Guidance on Paneling of Cases

The memorandum directs PTAB and TTAB management to avoid empaneling cases to judges who hold stock or bonds, publicly traded or privately held, in any disclosed party or real party in interest, regardless of dollar value. It is interim guidance, separate from and not altering existing ethics standards, and it neither requires divestiture nor bars judges from holding such interests. The guidance is internal to the Boards, but it can lead to repaneling and so bears on the identification of parties and real parties in interest in a proceeding. Petitioners and patent owners (and TTAB parties) should know that any stock or bond holding by a judge, spouse or minor child in a disclosed party or real party in interest may lead to repaneling, so complete disclosure of the real parties in interest matters. The memorandum states it rests on the Director's authority under 35 U.S.C. §§ 3 and 6 to set policy and designate PTAB panels, 35 U.S.C. § 6(c) for panel assignment, and 15 U.S.C. § 1067 for the TTAB. It also states it does not alter existing ethics rules, including the 5 CFR § 2640.202 de minimis exemption, and that no prior or future decision in which judges complied with the ethics rules will be revisited. WHAT IT DOES: Directs Board management to avoid empaneling cases to judges who hold stock or bonds (publicly traded or privately held) in any disclosed party or real party in interest, regardless of dollar value. Asks judges to voluntarily tell management, as part of existing conflict checks, of companies in which they, their spouse or minor children own stocks or bonds. Directs judges, on notice of empanelment, to promptly notify paneling staff if repaneling is necessary under the guidance. Directs a judge who later learns of such a holding in a party or real party in interest to request repaneling or confer with the USPTO Office of General Counsel. Judges keep discretion to request repaneling for other reasons. No divestiture is required, and holdings are not prohibited. WHO AND WHEN: Addressed to members of the PTAB and TTAB. It applies only to assignment of PTAB judges to panels under 35 U.S.C. § 6(c) and of TTAB judges to TTAB panels. It takes effect 60 days after the September 22, 2023 date of the memorandum and applies to all future proceedings before the USPTO. It remains in place until further notice. KEY QUOTE: "This new paneling guidance is separate from existing ethics standards and does not in any way alter the ethics standards that apply to PTAB and TTAB judges." (p. 3) EARLIER GUIDANCE AFFECTED: The memorandum says it does not alter existing ethics standards, including the executive branch regulation at 5 CFR § 2640.202 setting a $15,000 aggregate threshold for publicly traded stock. It states that Board management and the Director will update Standard Operating Procedure 13 to provide further details consistent with the memorandum. PRACTICE TIP: Make sure the real parties in interest and other parties are fully and accurately identified in the filings, since paneling and any repaneling depend on the disclosed parties, and do not expect the guidance to support revisiting past decisions. Issued by Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.