On June 21, 2021, the Supreme Court held the Director of the USPTO “may review final PTAB decisions and, upon review, may issue decisions himself on behalf of the Board.” United States v. Arthrex, Inc., 141 S. Ct. 1970, 1987 (2021) (holding that 35 U.S.C. § 6(c)—“Only the Patent Trial and Appeal Board may grant rehearings”—cannot be constitutionally enforced against the Director for inter partes review proceedings). In this way, the agency’s decisions now have the imprimatur of the President-appointed and Senate-confirmed Director, otherwise eliminating a constitutional infirmity under the Appointments Clause. U.S. Constitution, Art. II, § 2, cl. 2; see Arthrex, 141 S. Ct. at 1985–86. Of note, presently, Drew Hirshfeld, Commissioner for Patents, is performing the functions and duties of the Director and does not intend to defer Director review until a political appointee is confirmed. PTAB Boardside Chat (July 1, 2021) at 28:00–50.
To facilitate the Director’s review, the USPTO has outlined an interim procedure that the agency expects to evolve over time. See Arthrex Q&As, https://www.uspto.gov/patents/patent-trial-and-appeal-board/procedures/arthrex-qas (July 20, 2021); USPTO Implementation of an Interim Director Review Process Following Arthrex, https://www.uspto.gov/patents/patent-trial-and-appeal-board/procedures/uspto-implementation-interim-director-review. Presently, the interim procedures apply only to final written decisions in inter partes review, post-grant review, and covered business method review proceedings, not institution decisions. PTAB Boardside Chat (July 1, 2021) at 31:44–32:38, 52:53–53:15.
The avenues of Director review are illustrated in the image viewable below (PTAB Boardside Chat, July 1, 2021), with further details provided herein. PTAB Boardside Chat, https://www.uspto.gov/about-us/events/learn-about-interim-director-review-process-following-us-v-arthrex-inc (July 1, 2021).
Party Requested Director Review. As illustrated above, under the USPTO’s current framework, a party to the proceeding may seek review of a Final Written Decision (FWD) by either (1) the original panel or (2) the Director. Not both—a request for both will be treated as solely a request for Director review. If the panel grants rehearing, a party may request Director review of that decision (but not a decision denying rehearing). Arthrex Q&As, A3. If granted, the Director’s review will be de novo, may address any factual or legal issue, and will not be limited by prior precedential or informative PTAB decisions. Arthrex Q&As, A1; PTAB Boardside Chat (July 1, 2021) at 45:40–47:25, 47:55–49:03.
For seeking Director review, the procedure is similar to that of panel rehearing under 37 C.F.R. § 42.71(d) and Standard Operating Procedure 2. Arthrex Q&As, A2. The request for Director review must be entered on PTAB E2E and notice submitted to the Office by email to [email protected] (copying counsel for all parties). The request must be filed within 30 days of the FWD or grant of panel rehearing, see 37 C.F.R. § 42.71(d), and will reset the time for appeal or civil action, see 37 C.F.R. § 90.3(b). The request is also limited to 15 pages, see 37 C.F.R. 42.24(a)(1)(v), and the USPTO has warned that this review process is not an opportunity for parties to make new arguments or submit new evidence, unless requested by the Director. Arthrex Q&As, A7, A8. A non-requesting party is not entitled to respond but may seek authorization to do so. PTAB Boardside Chat (July 1, 2021) at 30:10–30:40. Similarly, a party is not entitled to an oral hearing regarding its request but may request such a hearing. PTAB Boardside Chat (July 1, 2021) at 32:48–33:40.
The Director will determine whether to review a PTAB decision based on a recommendation from an advisory committee that will evaluate the requests. The committee will be comprised of members from other divisions of the USPTO, including, for example, the Office of the Under Secretary, the PTAB, the Office of the Commissioner for Patents, the Office of the General Counsel, and the Office of Policy and International Affairs. And it will review the PTAB’s decision for a broad range of issues, such as material errors of fact or law, matters the PTAB misapprehended or overlooked, novel issues of law or policy, issues on which Board panel decisions are split, issues of particular important to the Office or patent community, or inconsistencies with Office procedures, guidance, or decisions. Arthrex Q&As, D1, D2; PTAB Boardside Chat (July 1, 2021) at 43:46–45:30. The membership and size of the advisory committee has not been specified and may change as the demands for Director review change. PTAB Boardside Chat (July 1, 2021) at 53:55–56:33
Sua Sponte Director Review. Separate from party-requested review, the Director may decide to sua sponte initiate review of any FWD or panel decision granting or denying rehearing. This would only occur before a notice of appeal was filed or, if no such notice has been filed, before the time for filing such a notice has passed, see 37 C.F.R. § 90.3. Arthrex Q&As, A6. If the Director decides to sua sponte review the panel’s decision, the parties will be given notice and may be given an opportunity for briefing. Arthrex Q&As, A1. Unlike evaluation of requests for Director review, sua sponte review will be facilitated by the PTAB’s internal management review team that will alert the Director to any decisions that may warrant further review. The USPTO has noted that this review will rely on many of the same criteria noted above for the advisory committee. Arthrex Q&As, D3.
Interim Procedures: Stay tuned for further updates as the USPTO has emphasized that the interim procedures will likely evolve based on agency experience and stakeholder input. Arthrex Q&As, A4, A5; PTAB Boardside Chat (July 1, 2021) at 1:01:00–1:02:00.