USPTO Issue Notice of Proposed Rulemaking for Rules Governing Director Review of Patent Trial and Appeal Board Decisions | WilmerHale
On April 16, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (NPRM) regarding Director Review of Patent Trial and Appeal Board (PTAB) decisions in America Invents Act (AIA) proceedings.1 The NPRM states that the proposed rules are “consistent with the interim process” currently employed by the USPTO, and comments to the NPRM must be submitted by June 17, 2024.
Background
In 2011, Congress enacted the AIA, which established the PTAB. The PTAB adjudicates Inter Partes Review (IPR), Post-Grant Review (PGR), and ex parte appeal proceedings.
In United States v. Arthrex, the Supreme Court held that the USPTO’s Director must retain the “ability to supervise [administrative patent judges] in adjudicating petitions for inter partes review.”2 Following Arthrex, the USPTO implemented interim processes for Director Review of AIA proceedings, which were subsequently amended following feedback from various stakeholders. The USPTO’s Revised Interim Director Review Process3 is available on the USPTO’s website, along with a Status of Director Review Requests4 subpage that contains information regarding prior Director Review decisions.
Overview of Proposed Rule
Scope: The NPRM states that the proposed rule “is consistent with” the USPTO’s interim process. A party may only request Director Review of: (1) a decision on whether to institute an AIA trial, (2) a final written decision in an AIA proceeding, or (3) a panel decision granting a request for rehearing of a decision on whether to institute a trial or a final written decision in an AIA proceeding. The Director may also grant review of those same decisions sua sponte. Communications from third parties regarding a specific Director Review request or proceeding, aside from authorized amicus briefing, are not permitted and will not be considered.
Procedure: The Proposed Rule describes various procedural aspects of Director Review. For instance, “a party to a proceeding . . . may file one request for Director Review of a decision . . . instead of filing a request for rehearing of that decision.” The Proposed Rule also describes Director Review request timing, format and length, content, and effect on the underlying proceeding’s deadlines. It provides that the Director must issue a public order or decision following a grant of Director Review that explains the reasons for the Director’s disposition of the case. Under the Proposed Rule, the Director may delegate his or her review of a decision.
Appeals to the Federal Circuit: The Proposed Rule provides that a party may appeal a Director Review decision of either a final written decision or a decision granting rehearing of a final written decision to the United States Court of Appeals for the Federal Circuit. But Director Review decisions on decisions on institution are not appealable. Per the Proposed Rule, a request for Director Review or the initiation of a review on the Director’s own initiative will reset the time for appeal until after all issues on Director Review in the proceeding are resolved.
Conclusion
Industry participants should consider providing comments to the NPRM, which are due by June 17, 2024, and continue to monitor developments in this space.
Footnotes
