Legal Alert: USPTO Issues Proposed Rules on Director Review

On April 16, the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking (NPRM) regarding Director Review of Patent Trial and Appeal Board (PTAB) decisions.

Notice of Proposed Rulemaking  

This new NPRM proposes to codify the interim Director Review processes that were implemented in July 2023, which modified the Director Review processes that were first installed in 2021. Specifically, the proposed rules would:  

• Replace the Precedential Opinion Panel process with the Director Review process and the Appeals Review Panel process  
  • Each request for Director Review is to be considered by an Advisory Committee established by the Director to assist with the process. The Advisory Committee includes at least 11 members and can include personnel from outside of the PTAB, including from the Office of the Under Secretary, the Office of the Commissioner for Patents, the Office of the General Counsel, and the Office of Policy and International Affairs.  
• Provide an option for the Director to delegate review of a Board decision to a Delegated Rehearing Panel (DRP) 
  • The Director can determine whether to grant or deny review based on the request for Director Review, the underlying decision, and the Advisory Committee’s recommendation, and can also delegate review to the DRP.  
• Allow for parties to a proceeding to request Director Review in that proceeding of (1) a decision on institution, (2) a final written decision, or (3) a panel decision granting a request for rehearing of an institution decision or a final written decision  
  • The Director may also grant review of any of those decisions sua sponte.  
  • Third parties may not request Director Review or communicate with the USPTO concerning Director Review of a case except by Director invitation.  
  • Requests for Director Review of institution decisions and of decisions on rehearing of institution decisions are limited to decisions presenting an abuse of discretion or important issues of law or policy.  
  • Requests for Director Review of final written decisions and of decisions on rehearing of final written decisions are available for decisions presenting an abuse of discretion, important issues of law or policy, erroneous findings of material fact, or erroneous conclusions of law.  
• Limit parties to requesting either (1) Director Review or (2) rehearing by the original panel, but not both  

Beyond formalizing the revised Director Review process, the proposed rulesprovide PTAB practitioners more opportunities to request Director Review of Board decisions while also paving the way for more efficient handling of those requests, as well as the Director’s continued use of the process sua sponte to address important issues.

To learn more about other recent developments in Director Review that likely will inform the implementation and execution of this new rule, see our analysis of the DRP’s first two decisions here and our overview of the 2023 revisions to the Director Review process here.