Patent Trial and Appeal Board Decisions

This week the USPTO issued a notice of proposed rulemaking to institute rules for Director Reviews of PTAB decisions. “Rules Governing Director Review of Patent Trial and Appeal Board Decisions,” 89 FR 26807 (April 16, 2024),. PTAB is an adjudicative body within the U.S. Patent and Trademark Office. The proposed rules will replace (and largely follow) interim guidelines that were issued by the USPTO in response to the Supreme Court’s decision in U.S. v. Arthrex, 141 S. Ct. 1970 (2021).

In Arthrex the Supreme Court resolved the Constitutional problem of Article I PTAB judges being able to issue final decisions in IPR proceedings, while not being under direct control by the Director of the USPTO, by finding that the Director had the authority to review such decisions, and that the Director must have the discretion to make such a review. In June 2021 the USPTO instituted an interim process for Director Reviews of PTAB decisions, and the interim process was modified in July 2023. Now the USPTO is proposing formal rules for Director Reviews.

The new rules would be codified as 37 CFR 42.75. As noted above, the new rules largely follow the revised interim rules, and allow parties to all AIA proceedings (IPRs, PGRs, and derivation proceedings) to request review by the Director on decisions on institution of proceedings, on final written decisions of the USPTO, or on decisions granting rehearing of PTAB decisions. One thing of note is that the new rules maintain broad discretion for the Director to institute a review sua sponte, stating only (in proposed rule 42.75(b)) that “[a]bsent exceptional circumstances, any sua sponte Director Review will be initiated within 21 days after the expiration of the period for filing a request for rehearing.”

The deadline for submitting comments on the proposed rules is June 17, 2024.

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