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PTO Updates Arthrex Guidance

The US Patent & Trademark Office (PTO) updated its June 29, 2021, interim procedure to implement the Supreme Court of the United States’ decision in U.S. v. Arthrex, Inc., and specifically updated the Arthrex Q&As section. The PTO’s July 20, 2021, updates address the effect of Arthrex on Patent Trial & Appeal Board (PTAB) proceedings generally and ongoing proceedings in particular. In Arthrex, the Supreme Court held that appointment of PTAB administrative patent judges violated the Appointments Clause of the Constitution, and that the proper remedy was to vest the PTO director with discretion to overturn the PTAB’s decisions.

In section A of the Q&As, pertaining to the effect of Arthrex on PTAB proceedings, the PTO explained that the director has the option to sua sponte initiate director review of any final written decision at any point before the filing of a notice of appeal or before the time for filing such a notice has expired. The updated Q&As further explain that a request for director review is not an opportunity for a party to make new arguments or submit new evidence and imposes a 15-page limit on any request. The updated Q&As also clarify the mechanism to request review by the director. The update clarifies that a party cannot request both director review and a panel rehearing after the issuance of a final written decision, and if a party requests both it will be treated as a request for director review. However, if a panel rehearing is granted, a party can request director review of the rehearing panel decision.

In section B of the update, pertaining to the effect of Arthrex on ongoing PTAB proceedings, the PTO clarified the deadline for requesting a rehearing by the director and the circumstances under which the director will consider granting extensions of the rehearing deadlines.

In addition, the PTO added a new section, section D, pertaining to the interim internal process for director review. In section D, the Q&As address:

  1. What happens to a director review request when it is received by the PTO?

  2. What criteria does the advisory committee use when evaluating director review requests?

  3. How will the director identify decisions for sua sponte director review?

Regarding 1), the Q&As explain that requests for director review will be evaluated by an advisory committee established by the director. Regarding 2), the Q&As explain there is no exclusive list of criteria, but list criteria the advisory committee may consider. Regarding 3), the Q&As explain that the PTAB internal management review team will alert the director to decisions that may warrant director review.

© 2021 McDermott Will & EmeryNational Law Review, Volume XI, Number 210
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About this Author

Bernard P. Codd, McDermott WIll Emery Law Firm, Intellectual Property Attorney
Partner

Bernard P. Codd is a partner in the law firm of McDermott Will & Emery LLP and is based in the Washington, D.C., office.  He focuses his practice on patent prosecution and opinions in the areas of semiconductor device and manufacturing, battery, fuel cell, photolithography, chemical, metallurgy, and polymer technologies.

202-756-8182
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