USPTO Publishes Notice of Proposed Rulemaking for Director Review

The U.S. Patent and Trademark Office (“USPTO”) published a Notice of Proposed Rulemaking, which, if implemented, would formalize the Director Review process. The Proposed Rule, 37 C.F.R. § 42.75, largely tracks the revised interim process for Director Review that was set forth following the Supreme Court’s holding in United States v. Arthrex, Inc., 594 U.S. 1, 24 (2021), that “[d]ecisions by [Administrative Patent Judges] must be subject to review by the Director.” 

The Proposed Rule would permit a party to a Board decision to request Director Review of an institution decision, a final written decision, or a decision granting rehearing. It would likewise permit the Director to order sua sponte Director Review of an institution decision, a final written decision, or a decision granting rehearing.  Consistent with the revised interim process, a party would be limited to requesting Director Review or rehearing by the Board, i.e., it would not be permitted to request both. Unless granted an extension by the Director, the timing for requesting Director Review would be the same as that for requesting rehearing (see 37 C.F.R. § 42.71(d)), and no response to such a request would be permitted absent Director authorization. The request would be limited to 15 pages (see 37 C.F.R. § 42.24(a)(1)(v)) and, absent authorization, could not introduce new evidence. Further, requesting Director Review or the Director’s initiation of sua sponte Director Review would not stay the underlying proceeding unless the Director ordered otherwise; however, it would reset the time for appeal until after all issues on Director Review were resolved. 

Interestingly, the revised interim process limited requests for Director Review of institution decisions or decisions granting rehearing of institution decisions to those decisions presenting (a) an abuse of discretion or (b) important issues of law or policy. It likewise limited requests for Director Review of final written decisions or decisions granting rehearing of final written decisions to those decisions presenting (a) an abuse of discretion, (b) important issues of law or policy, (c) erroneous findings of material fact, or (d) erroneous conclusions of law. Such limitations, however, are notably absent from the Proposed Rule.

The USPTO will accept comments and feedback from the public through June 17, 2024.