PTAB Eliminates POP Review and Expands Director Review to Institution Decisions | Venable LLP
[co-author: April Breyer Menon]
As of July 24, 2023, the United States Patent and Trademark Office (USPTO) revised the interim Director Review process and replaced the Precedential Opinion Panel (POP) with the Appeals Review Panel process, which will review decisions in ex parte, re-examination, and reissue appeals, and the Delegated Rehearing Panel (DRP), which will review decisions from America Invents Act (AIA) proceedings, such as inter partes reviews (IPRs) and post grant reviews (PGRs). Most notably, requests for Director Review will now be accepted for institution decisions and decisions granting rehearing in addition to final written decisions. Additionally, requests for Director Review may now be decided by the DRP instead of directly by the PTO Director.
According to the revised guidance, requests for Director Review of institution and grants of rehearing of institution decisions are limited to cases implicating “potential (a) abuse of discretion or (b) important issues of law or policy.” Requests for Director Review of final written decisions and related grants of requests for rehearing are limited to cases 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.” Parties are limited to requesting either Director Review or rehearing of a decision and cannot request both.
The Delegated Rehearing Panel (DRP) will consist of three members of the Patent Trial and Appeal Board (PTAB), designated by the Director. The panel will be chosen from the Chief Administrative Patent Judge, Deputy Chief Administrative Patent Judge, Vice Chief Administrative Patent Judges, and Senior Lead Administrative Patent Judges, excluding any judges on the original panel and any judges with conflicts in the case. The Director can choose any case to delegate to the DRP, including when Director Review is requested by the parties or initiated sua sponte, but may choose cases that need further independent review but do not present issues that rise to the level of needing Director Review. Examples include cases where the Board may have misapprehended or overlooked an issue. The DRP makes decisions independently, without direction from the Director, unless specifically noted in a Director order. DRP decisions can be nominated to be precedential or informative, and the Director can also choose to designate or de-designate the decisions or portions of them as precedential or informative.
The guidance notes that while Federal Circuit appeal can be taken from Director Review or DRP decisions of final written decisions, Director Review and DRP decisions on institution are not appealable. A single request for rehearing of a Director Review or DRP decision granting review is available, but these requests, particularly of Director Review decisions, are expected to be rare and should identify what the Director Review/DRP decision misapprehended or overlooked. If the Director or DRP decides to remand the case to the Board, that case cannot be reheard, but the Board’s decision on remand can. While the Director maintains the right to review any DRP or Board remand decision sua sponte, parties cannot request further Director Review of a DRP decision or a Board’s decision on remand.
As of July 15, 2023, grant of Director Review of IPR decisions requested by the parties has been very rare, with only six requests for review by the parties (five from the patent owner and one from the petitioner) granted to date. Overall, there have been 233 decided requests for Director Review (including sua sponte), 12 were dismissed, 37 were granted (31 of which were sua sponte reviews), and 184 were denied. Requests for Director Review have mainly come from patent owners, with only 28 requests coming from petitioners. Status of Director Review requests and a summary of granted requests are provided by the USPTO here.
