Article March 11, 2022
What’s New in Director Review?
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In July, the United States Patent and Trademark Office announced several changes to the interim process for Director review of Patent Trial and Appeal Board decisions. Originally established shortly after the Supreme Court’s decision in U.S. v. Arthrex, 594 U.S. ___ (2021), the interim process has been revised several times. The July 2023 revision explicitly extends the scope of Director review to institution decisions and establishes a Delegated Rehearing Panel and Appeals Review Panel. Collectively, these changes replace the Precedential Opinion Panel.
Director Review of Institution Decisions
The Court in Arthrex addressed only the Director’s authority to review final written decisions of the PTAB in inter partes review proceedings. Now, a party may request Director review of:
- Institution decisions
- Final written decisions
- Decisions granting requests for rehearing of either of the above
Director review of institution decisions is available for both discretionary and merits-based decisions. Requests for Director review of institution decisions (and decisions on rehearing of institution decisions) are limited to decisions presenting (a) an abuse of discretion and/or (b) important issues of law or policy. Requests for Director review of final written decisions (and decisions on rehearing of final written decisions) can be raised on the same bases, in addition to (c) erroneous findings of material fact, and/or (d) erroneous conclusions of law. A party requesting Director review must provide a priority-ranked list of issues for which it seeks review and an express indication of the alleged abuse of discretion, important issue of law or policy, or erroneous finding of material fact or conclusion of law.
When review is granted, the Director will review institution decisions for an abuse of discretion, except that important issues of law or policy will be reviewed de novo. The Director will review final written decisions de novo. Director review decisions of final written decisions are appealable to the Federal Circuit under the same procedures for appealing other Board decisions. Decisions on institution are not appealable.
Although party requests for Director review are limited to the issues above, the Director retains authority to initiate review of Board decisions sua sponte.
Delegated Rehearing Panel
The revised guidance also establishes a Delegated Rehearing Panel to which the Director may delegate review of PTAB decisions in America Invents Act proceedings, regardless of whether a party requested the review or the Director initiated it sua sponte. The Panel will consist of three Board members who will be selected from among the Chief Judge, Deputy Chief Judge, Vice Chief Judges, and Senior Lead Judges. The Panel excludes judges who served on the original Board panel for the case under review or who otherwise have a conflict with the case.
The Director has broad discretion over when to delegate decisions to the Panel. Although the Director is not limited in which decisions may be delegated for review, the Office expects that the Delegated Rehearing Panel will focus on decisions in which the Board may have potentially misapprehended or overlooked an issue.
Delegated Rehearing Panel decisions of final written decisions are appealable to the Federal Circuit under the same procedures for appealing other Board decisions in AIA proceedings, while decisions on institution are not appealable. A party may file a single request for rehearing of a decision by the Delegated Rehearing Panel but is not permitted to file further requests for Director review of a decision of the Panel or the Board on remand. However, the Director may review any Panel decision or decision of the Board on remand sua sponte.
Appeals Review Panel
The Office also established the Appeals Review Panel in July, which may be convened by the Director sua sponte to review PTAB decisions in ex parte appeals, reexamination appeals, and reissue appeals. The Office will not accept or consider party requests for Appeals Review Panel review. The Panel will consist of three members and by default will include the Director, the Commissioner for Patents, and the Chief Judge of the PTAB, although the Director retains discretion to appoint other Board members to the Panel. Decisions of the Panel are appealable to the Federal Circuit under the same procedures for appealing other Board decisions in the applicable proceedings.
Elimination of the Precedential Opinion Panel
The revised interim Director review process (including the Delegated Rehearing Panel) and the Appeals Review Panel collectively replace the Precedential Opinion Panel and its related processes. Any recommendation for Precedential Opinion Panel review filed on or before July 24, 2023, and pending as of July 24, 2023, will continue to be considered by the Precedential Opinion Panel.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
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