The US Patent and Trademark Office (USPTO) recently issued an update to its procedures for interim Director Review (DR) of decisions by the Patent Trial and Appeal Board (PTAB), evidencing USPTO Director Kathi Vidal’s efforts to formalize the process and procedures for conducting DRs following the US Supreme Court’s Arthrex decision. The July 24, 2023 update further revises the interim DR process published on June 29, 2021 (and subsequently updated in April, May, and June 2022).

REVISION OF INTERIM DR PROCESS

Issuance of the revised interim DR process comes on the heels of a Request for Comments issued by the USPTO on July 20, 2022 seeking stakeholders’ feedback on the current interim DR process, including the new revisions. A combination of the revised interim DR process and the new Appeals Review Panel process (discussed below) replaces the Precedential Opinion Panel (POP) process for now.[1]

Updates to the interim DR process include expanding the interim DR process to allow parties to request DR of PTAB decisions on institution of America Invents Act proceedings. This was previously unavailable, and, given the very limited circumstances that a decision on institution could be reviewed through appeal to the US Court of Appeals for the Federal Circuit, is a welcome tool to both patent owners and petitioners seeking review and oversight over such decisions.

The updates also clarify what issues the Director will consider in DR (e.g., abuse of discretion, consideration of novel or unsettled legal issues) and provide additional specifics on actions taken in conjunction with DR, including remands to the PTAB and the Director’s ability to sanction parties.

GUIDANCE ON EX PARTE APPEALS

In addition to updating the DR process, the USPTO also provided guidance concerning ex parte appeals, including “a memorandum and an internal operating procedure (IOP) that consolidate and describe current practices related to opinion writing and other internal procedures.”[2] The USPTO has indicated that the memorandum serves as a single source for PTAB judges to use in addressing issues raised during ex parte appeals. Appellants in these ex parte proceedings would be well served to familiarize themselves with the memorandum and the IOP to ensure that the PTAB is adhering to these consolidated guidelines.

NEW REVIEW PANELS

Finally, the USPTO has created two new panels for DR and ex parte appeals:

• Delegated Rehearing Panel. First, the Director will have the option to delegate review to a new independent panel called the Delegated Rehearing Panel (DRP).[3] The delegation may occur in cases where a party requests DR, or sua sponte, on the Director’s own initiative. Panelists of the DRP will be selected impartially from a pool consisting of the Chief Judge of the PTAB, Deputy Chief Judge, Vice Chief Judges, and Senior Lead Judges, excluding judges who served on the original board panel for the case under review or otherwise have a conflict with the case.
• Appeals Review Panel. The USPTO has also created the Appeals Review Panel (ARP), which the Director may convene sua sponte to review ex parte, reexamination, and reissue appeal decisions. Notably, the USPTO indicates that “[r]equests for ARP review will not be accepted or considered.”[4] By default, the makeup of the ARP is the Director, the Commissioner for Patents, and the Chief Judge of the PTAB.[5]

NEXT STEPS

Director Vidal notes that, “[w]ith these changes, [the USPTO is] enhancing and streamlining the Director Review and related processes, thereby making our procedures more efficient and effective for America’s innovators.”

In the near future, the USPTO will initiate a public notice and comment rulemaking process to allow stakeholders to weigh in on the changes. Stakeholders should continue to monitor all of the activity from Director Vidal’s administration around the DR process and make use of the DR process as appropriate for requesting reviews, as appropriate, of institution decisions or final written decisions.

[1] As part of the updates to the process, Director Vidal has de-designated Proppant Express Investments, LLC v. Oren Techs., LLC, Case No. IPR2018-00914, Paper 38, from precedential status, reflecting the retirement of the POP process.

[2] USPTO extends Director Review (DR) option to institution decisions, retires the Precedential Opinion Panel (POP), and updates interim DR procedures, USPTO Subscription Center Bulletin (July 24, 2023).

[3] It will be interesting to see whether there is litigation about the authority for this delegation in view of the Arthrex decision. 141 S. Ct. 1970, 1987 (the Supreme Court explaining that “the Director has the authority to provide for a means of reviewing PTAB decisions” and “may review final PTAB decisions and, upon review, may issue decisions himself on behalf of the Board” (citations omitted)).

[4] Appeals Review Panel, USPTO: PTAB Decisions (2023) (last visited July 25, 2023).

[5] Id. The USPTO also indicates that the Director will select the ARP impartially. It is unclear when the default ARP will be used, when the ARP will include other PTAB judges, and whether the ARP is re-paneled for each individual appeal.

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