In the event the Patent Trial and Appeal Board (Board) or court decision is one that significantly adds to the body of law by, for example, addressing a new legal or procedural issue, or providing a new interpretation of a prior decision, such a decision may result in a United States Patent and Trademark Office (USPTO) memorandum pointing out the significance of the decision to the examination process.
When any examiner or supervisor in the Patent Examining Corps (Corps) concludes that a recent decision of the Board or a court affects existing USPTO policy or practice, the matter should be brought to the attention of the appropriate TC Director through normal chain-of-command procedures.
When the TC Director believes that guidance to the Corps is warranted as a result of a decision, the TC Director should consult with the Deputy Commissioner for Patent Examination Policy and provide a draft of the guidance that is recommended as appropriate under the circumstances. The Deputy Commissioner for Patent Examination Policy will then consult appropriate Office officials, as necessary, to formulate a recommendation to the Commissioner for Patents on the policy implications of the decision’s opinion.
It may be necessary for the Director, General Counsel, Solicitor, Chief Administrative Patent Judge, Commissioner for Patents, Deputy Commissioner for Patent Examination Policy, Deputy Commissioner for Patent Operations and TC Director making the recommendation to meet to review and discuss the policy ramifications of the decision’s opinion and recommended guidance to enable the Director to determine how the USPTO will proceed.
Communication of the determination of the policy implications of the court or Board decision will normally take place by either notice in the Official Gazette and/or via memorandum to USPTO personnel. Ultimately, the policy implications of the decision will be officially incorporated into the Manual of Patent Examining Procedure and Office of Patent Training curriculum materials during the next update cycle for these reference materials.