Since the start of post-grant proceedings, the Patent Office has published a Patent Trial Practice Guide to provide a framework for conducting those proceedings, including setting out the structure and times for taking action in each of the new proceedings (e.g., Inter Partes Review and Post Grant Review). The first Trial Practice Guide issued in August 2012, and updates were issued in August 2018, July 2019, and November 2019 (Consolidated Trial Practice Guide).  To guide post-grant practice, the Patent Office has also designated more than 40 decisions as precedential or informative. A topic of continued interest is the Patent Office’s practice surrounding its decision whether to institute a post-grant proceeding after a petition is filed.

Recently, the Patent and Trademark Office issued a Federal Register notice regarding a Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board. The full text of the notice can also be found in PDF format here and here.

In its summary of the issue, the Patent Office stated:

The United States Patent and Trademark Office (Office or USPTO) seeks public comments on considerations for instituting trials before the Office under the Leahy-Smith America Invents Act (AIA). The USPTO is considering the codification of its current policies and practices, or the modification thereof, through rulemaking and wishes to gather public comments on the Office’s current approach and on various other approaches suggested to the Office by stakeholders. To assist in gathering public input, the USPTO is publishing questions, and seeks focused public comments, on appropriate considerations for instituting AIA trials.

Please note that the PTO is taking comments through the website:

For reasons of government efficiency, comments must be submitted through the Federal eRulemaking Portal at To submit comments via the portal, enter docket number PTO-C-2020-0055 on the home page and click “search.” The site will provide a search results page listing all documents associated with this docket. Find a reference to this Request for Comments and click on the “Comment Now!” icon, complete the required fields, and enter or attach your comments. Attachments to electronic comments will be accepted in ADOBE® portable document format or MICROSOFT WORD® format. Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments. (Emphasis added.)

The request for comments page has more details.

As of Nov. 19, 2020, there are 461 comments on the proposed rule, which can be found at under Docket No. PTO-C-2020-055.  The docket for comments was initially to close today, but the PTO recently issued a notice that it will extend the comment period to December 3, 2020.  Please watch the notice page and the docket page for more information, and be sure to submit a comment if the proposed rules are of interest to you or your practice.