Post grant pilot a success, says PTAB chief judge

A US initiative called the “post grant outcomes pilot” has been a success, according to the chief judge of the Patent and Trial Appeal Board (PTAB).

In a  blog by David Ruschke, chief judge at the PTAB, and Drew Hirschfeld, commissioner for patents, the pair noted that the pilot had “succeeded in making examiners aware of patents related to applications they are examining”.

This in turn facilitated “the timely and effective examination of applications”.

As part of the US Patent and Trademark Office’s (USPTO) ongoing “enhanced patent quality initiative”, the pilot was launched in April to focus on pending patent applications that are related to issued patents undergoing an America Invents Act (AIA) trial proceeding.

Trial proceedings cover prior art and arguments that might be highly relevant to determining the patentability of related applications being examined, according to the pair.

“This pilot was intended to help examiners harness the art presented during AIA trials to enhance examination of a related application, so they could reach more expeditious decisions on patentability,” said the blog.

Examiners were notified via email when they had an application related to an AIA trial. Access to the contents of the trial was streamlined by pinpointing the most relevant documents.

The examiners were then surveyed, with results showing that examiners found the PTAB information, especially the initial petition, the PTAB’s institution decision and any expert declarations to be highly useful.

Nearly half of the examiners (46%) referred to at least one reference cited in the AIA trial petition during the examination of their own case, either by citing it in a rejection or as pertinent prior art.

“If an examiner did not use or cite the prior art from the trial, it was most likely because the claims were different between the “parent” and the “child” case, the examiner disagreed with the AIA petitioner’s analysis of the prior art and/or claims, or the examiner was able to find better art,” said the blog.

In August, the USPTO deployed an upgrade to allow automated access for examiners to the contents of related AIA trials, including access to the entire file and any cited prior art.

The next objective is to identify best practices for examination and deficiencies that can be addressed through additional examiner training.