USPTO Director Reviews: Did OpenSky Prompt a Rethink?

U.S. Patent and Trademark Office (USPTO) director Kathi Vidal is rethinking various policies, including the director review process, after she recently sanctioned OpenSky Industries, LLC for trying to extract payments from both Intel Corp and VLSI Technology, who  won $2.2 billion from Intel in an infringement case. Questioning what a new director review process may look like, Finnegan partner Jeffrey Totten told World IP Review that he predicts a more circumspect attitude towards the cases picked for review.

“We may see some change in the cadence of the reviews. For example, there were several decisions granting director review in August of 2022, as well as decisions on director reviews. I don’t know if we’ll see another month like that. With respect to the number of cases that are being reviewed and decisions issued, perhaps the director will be a little more selective,” says Jeffrey.

He adds, “One could see the director focusing on, for example, primarily novel issues, or factual errors, and perhaps trying to make it a little more predictable as to what types of issues can be raised and will be taken on director review. We might see the director focus more on what the rules were at the time the decision was made, and applying those rules, instead of doing things that might be perceived as changing a patent office policy or procedure through the director review process.”

“[The director review] process is new so it’s unpredictable, and unsurprising, that it continues to evolve. We’re less than a year and a half on from Arthrex, so more changes can be expected. Because it is new, each decision gets a fairly big reaction. And that’s certainly exciting to watch.”

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