Authored by Haviland M. M. Kebler, Esq. and Jordan Block
In wake of the United States v. Arthrex case, in which the Supreme Court ruled that the language of 35 U.S.C. 6(c) and the Appointments Clause of the United States Constitution requires the Director of the Patent Office, an appropriately-appointed officer, to review the decisions of the Patent Trial and Appeal Board (“PTAB”) in inter partes proceedings, the United States Patent and Trademark Office (“USPTO”) published a Request for Comments seeking input on practices and policies in consideration of this decision.
This Request for Comments emerged in response to the USPTO’s efforts to formalize processes with relation to the accuracy, consistency, and integrity of PTAB decision-making. More specifically, the USPTO sought input on review processes related to inter partes review or post-grant review proceedings, as well as sua sponte review, all of which require Director review. In addition, the USPTO sought input regarding the Precedential Opinion Panel process, as well as interim processes for PTAB decision circulation and internal PTAB review.
As of July 24, 2023, the USPTO has implemented the revised interim Director Review process, as well as the Appeals Review Panel to replace the Precedential Opinion Panel process. The revised interim Director Review process allows for a party subject to PTAB decision-making to request the Director review PTAB’s decision. The party may request Director Review regarding whether to institute a trial, final written decision, or decision granting a request for rehearing. The revised process also allows the Director to initiate review of PTAB decisions sua sponte, at his or her own discretion, and opens the door to delegation of PTAB review by the Director, to a Delegated Rehearing Panel. These institutions, as related to the Director Review Process, allow for the Director to utilize his or her discretionary and delegatory power in reviewing the decisions of the Board, whether it be by request or sua sponte.
In conjunction with the Director Review process, the USPTO established the Appeals Review Panel. This panel may be convened at the discretion of the Director. Through the Appeals Review Panel, the Director can sua sponte review decisions of PTAB in ex parte appeals, re-examination appeals, and reissue appeals. Parties subject to the USPTO may not request review from the Appeals Review Panel.
These interim review processes exist in response to public comment and input and seek to formalize procedure within PTAB in a way that is both consistent and efficient. In response to the Arthrex decision, the USPTO has created an interim system in which the Director’s discretionary and delegatory authority are more clearly established. This more clearly outlined the authority of the Director and the hope is this new process will the goals of the USPTO to promote innovation through consistent and transparent decision-making and encourages the proper issuance and maintenance of patents.