Due to the increasing importance of PTAB decisions, we want to take this opportunity to review the various designations a PTAB decision might receive. The four designations currently used by the PTAB are routine, representative, informative, and precedential.
Routine Decisions
By default, a PTAB decision is routine unless designated otherwise, and most PTAB decisions are routine. A routine decision, which typically turns on the specific facts of a case, is binding authority in a particular case unless a subsequent PTAB decision, expanded PTAB panel, or a reviewing court overturns the decision. However, a routine decision is not binding authority in other cases and may have little, if any, persuasive value and generally should not be relied upon by a party in a different case.
Representative Decisions
The tier above routine decisions is representative decisions. Like routine decisions, representative decisions are binding authority in a particular case but are not binding authority in other cases. Representative decisions, which typically provide a representative sample of outcomes for a procedure or issue, are used by the PTAB to bring such opinions to the attention of the public from among numerous routine opinions. Presently, the representative designation has only been applied to AIA-related matters; as of the date of this post, no ex parte appeal decisions have been designated representative. To date, the PTAB has designated 45 decisions as representative — these include trial hearing orders, decisions on institution, scheduling orders, decisions on motions to amend, notices, settlement-related orders, evidentiary decisions and orders including discovery, and other trial-related decisions. In general, a representative decision should be cited to by a party only if the facts in a case closely resemble the facts in the representative decision.
Informative Decisions
An informative decision, like routine and representative decisions, is binding authority in a particular case but is not binding authority in other cases. The PTAB designates a decision as informative when it provides the PTAB’s general consensus on recurring issues and guidance to examiners, appellants, patentees, or petitioners in areas where parties routinely misapply the law. Additionally, in emerging areas of law, the PTAB may designate a decision as informative when the PTAB wants to wait to see how cases develop before designating a decision as precedential. To date, the PTAB has designated 145 decisions as representative — these include both AIA matters and ex parte appeals. In general, an informative decision should be cited to by a party only if the facts in a case closely resemble the facts in the informative decision.
Precedential Decisions
Finally, the highest tier is precedential decisions. Unlike routine, informative, and representative decisions, a precedential decision is binding authority on all PTAB members unless overcome by subsequent binding authority. An opinion is made precedential only “if a majority of the Board’s voting members agree that the opinion should be made precedential” and “the Director concurs.”[1] When considering whether a decision should be designated precedential, each Board member is invited to vote. (By statute, members of the PTAB include the Director of the USPTO, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and Administrative Patent Judges.) A Board member may abstain from voting, so the majority is calculated based on members who vote. In any case, a decision may not be designated precedential if the Director does not concur. While all parts of an opinion may be designated precedential, the PTAB may instead elect to designate only a subset of issues addressed in an opinion as precedential. Any party, PTAB member, or member of the public may request that an opinion be made precedential by submitting a written request to the Chief Judge of the PTAB within 60 days of issuance of the opinion. To date, the PTAB has designated 38 decisions as precedential. Precedential decisions may be cited to and replied upon in other PTAB cases.
Sample Designated Decisions
Precedential, informative, and representative PTAB decisions may be viewed here.
[1] PTAB Standard Operating Procedure 2 (Rev. 9): Publication of opinions and designation of opinions as precedential, informative, representative, and routine (Sept. 22, 2014) (emphasis added), located at http://www.uspto.gov/sites/default/files/documents/sop2-revision-9-dated-9-22-2014.pdf
