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USPTO lays ground for review of Fintiv rules

Kathi Vidal
Kathi Vidal

The USPTO's plans to file an Advanced Notice of Proposed Rulemaking related to Fintiv are pending regulatory review

The USPTO has indicated that it plans to initiate regulatory action related to Fintiv, it has emerged.

In a filing with the Office of Information and Regulatory Affairs (OIRA) on Thursday, March 9, the USPTO said it would publish an Advanced Notice of Proposed Rulemaking (ANPRM).

An ANPRM is a preliminary notice that an agency is considering regulatory action. The exact nature of the planned rule changes are unclear but could include draft language of what potential rulemaking will look like and can ask the public what issues it should address.

The OIRA, which reviews draft rules submitted by federal agencies, has 90 days from the date of filing to review requests, although this period can be extended.

The USPTO said its ANPRM would not be economically significant. The OIRA will have to determine whether that’s the case, which is important because agencies must provide more detail if changes are deemed to be economically significant.

Actions are economically significant if they’re likely to have a yearly effect of at least $100 million on the economy, or if the OIRA believes they will materially adversely affect the economy.

If the OIRA doesn’t spot any issues, the USPTO will likely initiate its ANPRM related to Fintiv – the rule introduced in 2020 that compels Patent Trial and Appeal Board judges to discretionarily deny inter partes reviews on the basis that parallel district court cases will finish first.

The office implemented interim guidance in July 2022 addressing Fintiv.

That guidance severely limited when the board could use Fintiv to deny petitions. But the USPTO stated at the time that it would soon explore potential rulemaking on proposed approaches through an ANPRM – which it’s now doing.

News of the ANPRM comes amid a busy time for Fintiv-related matters.

In a judgment yesterday, March 13, the Court of Appeals for the Federal Circuit ruled that tech companies could challenge instructions related to Fintiv because they were issued without notice-and-comment rulemaking.

Notice-and-comment rulemaking requires agencies to issue a Notice of Proposed Rulemaking, but they can issue ANPRMs first to get more information.

If businesses were to prevail on these challenges, the notice-and-comment rulemaking process would be crucial for Fintiv’s survival.

Managing IP will provide further analysis on the Federal Circuit’s ruling in the coming days.

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