After Arthrex, USPTO Creates Interim Director Review Process

On June 29, 2021, the USPTO issued guidance on the implementation of an interim Director review process in view of the Supreme Court’s decision in United States v. Arthrex.  Accordingly, the USPTO now provides a process by which a party can request review by the Director of PTAB final written decision.  A party interested in such review must do the following:

1. Enter a Request for Rehearing by the Director into PTAB E2E.
2. Submit a notification of the Request for Rehearing by the Director to the Office by email to Director_PTABDecision_Review@uspto.gov copying counsel for all parties by email.

A party must make a request for Director review within 30 days of the entry of a final written decision or decision on rehearing by a PTAB panel.  The interim review process is available for inter partes review or post-grant review proceedings.  Practitioners may note that this interim procedure is similar to the current process by which parties can request review from the Precedential Opinion Panel, which remains unchanged at this time.

In accordance with the USPTO guidance, Arthrex provides the Director authority to unilaterally review a PTAB final decision in an inter partes review or post-grant review.  The Director’s review may address any issue, including issues of fact and issues of law, and will be de novo.  Sua sponte Director review is also possible.  If the Director implements sua sponte review, the parties will be provided with the opportunity to brief the issues.

A party may request both Director review and, alternatively, rehearing by the original PTAB panel.  A party may also request Director review after the grant of rehearing by the original PTAB panel, even if Director review was not originally requested as part of the rehearing request.  That said, if a party initially requests only Director review, and that review is not granted, the party may not then request PTAB panel rehearing.

This process is only an interim procedure.  The USPTO envisions that the process may change over time and in response to public input and has stated that it will provide additional information and updates “in the near term.”  The USPTO is actively seeking comments from the public on the Director review process, which can be submitted by email to Director_Review_Suggestions@uspto.gov. 

Update

On July 20, 2021, in response to public questions and feedback regarding the interim Director review process, the USPTO updated its Arthrex Q&As. The updates provide further details and modifications to the process.  

The Q&As note that while the Director will not consider untimely requests for rehearing, he may choose to extend the rehearing deadline for good cause if a party requests an extension before the deadline for a rehearing request.  If a deadline for requesting rehearing had expired at the time Arthrex issued, the party may request a waiver of the deadline before the due date for filing a notice of appeal.  In a case remanded to the USPTO from a federal court, parties have 30 days from the date of the remand order to request Director review.

The Q&As also clarify that the Director may initiate review sua sponte at any point before the due date for filing a notice of appeal. 

Further, the Q&As note that the page limit for a Request for Rehearing by the Director is 15 pages.  Parties may not typically make new arguments or submit new evidence with their request.  However, the Director may request additional briefing on identified issues and, where appropriate, provide the parties an opportunity to submit new evidence.

The Q&As also provide more details on the internal process for Director review.  When a request for Director review is received, an advisory committee established by the Director will evaluate the request and advise the Director regarding whether the request merits review.  The Director himself will ultimately determine whether review will be granted or denied. 

This committee has no exclusive list of criteria it will consider.  That said, the USPTO notes that decisions may warrant review “if they include, for example, material errors of fact or law, matters that the Board misapprehended or overlooked, novel issues of law or policy, issues on which Board panel decisions are split, issues of particular importance to the Office or patent community, or inconsistencies with Office procedures, guidance, or decisions.”