BPAI Standard Operating Procedure 2 (Revision 7) "Publication of Opinions and Binding Precedent"

Michael
Fleming

Digitally signed by Michael
Fleming
DN: cn=Michael Fleming, c=US,
o=Board of Patent Appeals and
Interferences, ou=Chief
Administrative Patent Judge
Date: 2008.03.23 08:27:03
-04'00'

BOARD OF PATENT APPEALS AND INTERFERENCES
STANDARD OPERATING PROCEDURE 2 (REVISION 7)
PUBLICATION OF OPINIONS AND BINDING PRECEDENT
The following applies to the publication of opinions and adoption of binding
precedent of the Board of Patent Appeals and Interferences (Board). This Standard
Operating Procedure (SOP) creates internal norms for the administration of the
Board. It does not create any legally enforceable rights. The procedures described
in this SOP, as they pertain to determinations made by the Director, the Chief
Administrative Patent Judge (Chief Judge) and any other Administrative Patent
Judge (judge), are considered part of the deliberative process.

I.

Background
A. The Board annually issues a large number of opinions in appeals,

interferences and other proceedings. These opinions are written
primarily for the benefit of the parties to the proceedings. Most opinions
do not add significantly to the body of law.
B. In the past, Board opinions have been officially published in the Official

Gazette and the Decisions of the Commissioner of Patents, and other
publications. Opinions have also been published in paper and electronic
form by commercial organizations.
C. Beginning in late 1997, opinions in support of final decisions of the

Board of Patent Appeals and Interferences appearing in issued patents,
published applications, reissue applications, reexamination proceedings
and interference proceedings open to the public have been disseminated
by way of the Board's Internet web page. The Internet address for these
opinions is:
http://des.uspto.gov/Foia/BPAIReadingRoom.jsp
D. A diminishing fraction of applications before the Board are entitled to

confidentiality under 35 U.S.C. § 122(a) as a result of publication under
35 U.S.C. § 122(b) or by other means. Most Board opinions will be

published by the USPTO on the Board’s Internet web page. It is likely
that some of these opinions, as well as opinions not otherwise subject to
publication by the USPTO, will also be published by commercial
reporters.
E. The availability of these opinions on the Board’s Internet web page or

from other sources does not alter the fact that a Board opinion is binding
precedent only if the opinion has been made Precedential pursuant to the
provisions of this or earlier versions of SOP 2. Public policy favors
widespread publication of opinions, even if the opinions are not
considered binding precedent.
F. Nothing in this SOP should be construed as requiring a member of the

public to seek permission under this SOP to submit any nonprecedential
opinion of the Board in its possession to any commercial or other entity
for publication.
G. Any opinion made available to the public that (1) does not expressly

indicate that the opinion is binding precedent of the Board or (2) is not
identified as binding precedent on the Board’s Precedential opinion
website – http://www.uspto.gov/web/offices/dcom/bpai/prec.htm –
shall be deemed to be nonprecedential.
II.

Categories Of Board Opinions

There shall be three categories of Board opinions:
1. Precedential opinions
2. Informative opinions
3. Routine opinions.
III.

Criteria For Identifying Candidates To Be Made Precedential
A. The Board’s policy shall be to limit opinions which are candidates for

being made Precedential to those meeting one or more of the following
criteria:
1. The case is a test case whose decision may help expedite resolution of
other pending appeals or applications.
2. An issue is treated whose resolution may help expedite Board
consideration of other cases or provide needed guidance to examiners
or applicants pending court resolution.
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3. A new rule of law is established.
4. An existing rule of law is criticized, clarified, altered or modified.
5. An existing rule of law is applied to facts significantly different from
6.
7.
8.

9.

those to which that rule has previously been applied.
An actual or apparent conflict in or with past holdings of this Board is
created, resolved, or continued.
A legal issue of substantial public interest, which the Board has not
treated recently, is resolved.
A significantly new factual situation, likely to be of interest to a wide
spectrum of persons other than the party (or parties) to a case is set
forth.
A new interpretation of a Supreme Court decision, a decision of the
Court of Appeals for the Federal Circuit, or of a statute, is set forth.

B. The purpose of a Precedential opinion is to create a consistent line of

authority as to a holding that is to be followed in future Board decisions.
C. Disposition by nonprecedential – Informative or Routine – opinion does

not mean that the case is considered unimportant, but only that a
Precedential opinion would not add significantly to the body of law.
D. The Director, the Patents Operation acting through a Commissioner or

Assistant Commissioner, the appellant, a third party member of the
public, or any judge may request in writing that an opinion be made
Precedential, by forwarding that request, along with accompanying
reasons, to the Chief Judge. Typically, this request should be received
within 60 days after the opinion is issued. The request and subsequent
response shall be filed separately from the official record.
IV.

Procedures For Adoption Of Binding Precedent
A. Any opinion of the Board satisfying one or more of the criteria identified

in Section III above may be adopted as Precedential, either at the time of
its entry or subsequent to entry, provided that the following steps are
followed.
1. A majority of the merits panel that is entering or has entered the
opinion agrees that the opinion should be Precedential.
2. If the Chief Judge considers the opinion an appropriate candidate for
being made Precedential, the Chief Judge will circulate the opinion

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3.

4.

5.

6.

under consideration for designation as Precedential to all of the
judges.
Within a time set in the notice circulating the opinion (typically two
weeks from the date of the notice), each judge shall vote "agree" or
"disagree" (without further written comment or written discussion) on
whether that judge agrees the opinion should be made Precedential.
Barring extended unavailability (as in the case of serious illness), each
judge has an obligation to vote “agree” or “disagree.” If a judge does
not communicate a vote within the time set, then the judge’s vote will
be normally considered to be in agreement that the opinion be made
Precedential.
If the Chief Judge considers that a sufficient majority of those voting
agree that the opinion should be made Precedential, the opinion (along
with the numerical results of the vote) will be forwarded to the
Director, or the General Counsel acting by delegation on the
Director’s behalf, for review. If the Chief Judge does not consider
that a sufficient majority of those voting agree that the opinion should
be made Precedential, the opinion will not be forwarded for review.
If the Director, or the General Counsel acting by delegation on the
Director’s behalf, agrees that the opinion should be made
Precedential, the Director or General Counsel will notify the Chief
Judge of that determination.
The opinion is then published or otherwise disseminated following
notice and opportunity for written objection afforded by 37 CFR §
1.14, in those instances in which the opinion would not otherwise be
open to public inspection.

B. Opinions entered by expanded panels do not automatically become

Precedential, but instead are subject to the procedures of this SOP.
However, a prior Precedential opinion of a prior panel of the Board may
only be overturned by an opinion of an expanded panel that itself has
been made Precedential or pursuant to an event set forth in Section VI.D.
The authoring judge for any decision by an expanded panel shall call the
Chief Judge’s attention to the opinion prior to entry of the opinion so that
consideration of whether the opinion shall be made Precedential can
occur in advance of entry.
C. The Chief Judge will determine if the opinion is an appropriate candidate

to be made Precedential. If the Chief Judge is convinced that the opinion
ought not to be made Precedential (e.g., because the Chief Judge believes
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the opinion does not meet the criteria of Section III above), the Chief
Judge is under no obligation to consult other judges.
D. Where a written request for a Precedential opinion has been received, the

Chief Judge shall prepare an order indicating that the opinion has, or has
not, been adopted as precedent of the Board under the procedures of this
Standard Operating Procedure.
E. The opinion will become Precedential upon being published or otherwise

disseminated. Precedential opinions will be posted at:
http://www.uspto.gov/web/offices/dcom/bpai/prec.htm.
F. Clearance for publication, if needed under the rules, will be obtained by

the Chief Judge.
V.

Scope Of Director’s And Chief Judge’s Review
A. The Director of the United States Patent and Trademark Office (USPTO)

is both a statutory member of the Board (35 U.S.C.§ 6(a)) and the official
charged by statute with providing policy direction for the USPTO (35
U.S.C.§ 3(a)(2)). The determination of which decisions or opinions shall
have binding precedential effect on the USPTO generally is within the
province of the Director’s statutory policy role.
B. Review by the Director, or the General Counsel acting by delegation on

the Director’s behalf, is not for the purpose of reviewing or affecting the
outcome of any given appeal, but strictly for determining whether the
given opinion is to be made Precedential.
C. Neither review by the Chief Judge, nor consultation with judges not

assigned to the merits panel, is for the purpose of reviewing or affecting
the outcome of any given appeal, but strictly for determining whether the
given opinion is to be made Precedential.
VI.

Precedent Binding Upon The Board
A. The following are considered precedent binding upon the Board:
1. An opinion of the Supreme Court.
2. An en banc decision of the Court of Appeals for the Federal Circuit.
3. A decision of the Court of Appeals for the Federal Circuit, or its

predecessors, the Court of Customs and Patent Appeals (CCPA) and
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the Court of Claims, which the Court of Appeals for the Federal
Circuit considers binding precedent. See Newell Cos., Inc. v. Kenney
Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988); UMC Elecs. Co. v.
United States, 816 F.2d 647, 652 n.6 (errata) (Fed. Cir. 1987), cert.
denied, 108 S.Ct. 748 (1988); South Corp. v. United States, 690 F.2d
1368, 1370 (Fed. Cir. 1982) (en banc).
4. An opinion of the Board made Precedential by the procedures
contained in this or earlier versions of SOP 2.
B. Judges encountering conflicts in the decisions of the Court of Appeals for

the Federal Circuit, the CCPA, and/or the Court of Claims should call the
conflict to the attention of the Chief Judge.
C. All other opinions of the Board that are published or otherwise

disseminated are not considered binding precedent of the Board.
D. All judges, including the Chief Judge, are bound by a published or

otherwise disseminated Precedential opinion of the Board unless the
decision supported by the opinion is (1) modified by the Court of
Appeals for the Federal Circuit, (2) inconsistent with a decision of the
Supreme Court or the Court of Appeals for the Federal Circuit, (3)
overruled by a subsequent expanded panel, or (4) overturned by statute.
VII.

Informative Opinions
Informative opinions are not binding, but illustrate norms of Board
decision-making for the public, the patent examining corps, and future
Board panels. Informative opinions may explain best practices, address
recurring problems, identify developing areas of the law, exemplify types
of decisions under-represented in commercial case reporting services, or
report cases of public interest. The Chief Judge will determine which
opinions should be designated as Informative. Informative opinions will
be sent to commercial case reporting services, circulated within the Board,
and sent to the Commissioner for Patents. Informative opinions will also
be posted at:
http://www.uspto.gov/web/offices/dcom/bpai/informative_opinions.html.

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VIII. Routine Opinions
Given the large number of opinions and orders produced each year at the
Board, most opinions and orders will be Routine, and will not be designated
as Precedential or Informative. The Board will not send such opinions and
orders to commercial case reporting services. All opinions in support of a
final decision will be posted at:
http://des.uspto.gov/Foia/BPAIReadingRoom.jsp
unless the opinion is subject to confidentiality protections under 35 U.S.C.
§ 122(a) or secrecy under 35 U.S.C. § 181. Routine opinions that are cited
by a party or that are publicly available may be cited for whatever persuasive
value they may have but, as a general matter, Routine opinions should be
cited sparingly.

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