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:
Enter a Request for Rehearing by the Director into PTAB E2E.
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.