AIPLA filed a response to the USPTO’s October 20, 2020 request for comments on discretion to institute trials in inter partes review (IPR) and post grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB). The USPTO’s request solicits input on whether rulemaking is necessary and the type of rules it should adopt, but does not propose any rules. ​

AIPLA’s brief supports reversal of the Federal Circuit’s decision and argues that Supreme Court precedent does not support such a rigid, factor-specific approach, instead favoring a flexible analysis to assess whether an officer is “principal” or “inferior.” The brief explains that, while the question is a close one, the totality of the circumstances under this flexible approach supports finding that APJs are inferior officers who are constitutionally appointed.

As General Counsel, Mr. Berdan will serve as the principal legal advisor to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Mr. Berdan will also supervise the Office of General Counsel and its three component offices: the Office of the Solicitor, the Office of General Law, and the Office of Enrollment and Discipline. Over the past 25 years, Mr. Berdan has served in a variety of important legal positions, most recently, as General Counsel and Compliance Officer of Gaming Arts. Mr. Berdan will begin his new role at the USPTO on Monday, November 16.

On October 9, The USPTO published a notice seeking public input on proposed guidelines regarding continuing legal education (CLE). As we noted in an earlier notice, the final rule published on August 3, 2020, will require beginning March 1, 2022, that registered patent practitioners and individuals granted limited recognition to practice before the USPTO in patent matters, biennially submit a mandatory registration statement.

On October 13, 2020, the Supreme Court agreed to decide whether the Patent Trial and Appeal Board, as created by the AIA, violates the Appointments Clause in Article II of the Constitution. The Court granted certiorari in three consolidated cases (United States v. Arthrex, Inc., et al. 19-1434; Smith & Nephew, Inc., et al. v. Arthrex, Inc., et al., 19-1452; and Arthrex, Inc., v. Smith & Nephew, Inc., et al., 19-1458), but limited its review to two specific questions