In 2021, following the Supreme Court’s Arthrex decision, the PTO issued an interim procedure for requesting Director Review (discussed here). The PTO has now issued a Notice of Proposed Rulemaking (“NPRM”) formalizing the Director Review process. The NPRM outlines various proposed rules governing Director Review including specifying when such review can be requested, the timing and format of a party’s request, the interplay between requesting Director Review or panel rehearing, and initiating sua sponte reviews.
When Director Review Can Be Requested
Consistent with the interim Director Review process currently in place, under the NPRM, a party may only request Director Review of:
- a decision on whether to institute an AIA trial,
- a final written decision in an AIA proceeding, or
- a panel decision granting a request for rehearing of a decision on whether to institute a trial or a final written decision in an AIA proceeding.
These proposed rules specify that requests for Director Review of institution decisions or rehearings of such decisions should be limited to those that present either an abuse of discretion or important issues of law or policy. Requests for Director Review of PTAB final written decisions or decisions granting rehearing of such decisions, however, are available for those not only presenting an abuse of discretion or important issues of law or policy, but also erroneous findings of material fact or erroneous conclusions of law.
How To Request Director Review
To request Director Review under the NPRM, a party must file a request for rehearing pursuant to 37 C.F.R. § 42.71(d) in the Patent Trial and Appeal Case Tracking System and also send an email to the Director at Director_PTABDecision_Review@uspto.gov. Just like a normal request for rehearing under 37 C.F.R. 38 CFR § 90.3(b)(1), requests for rehearing by the Director would be limited to 15 pages, must be filed within the time prescribed under § 42.71(d) (typically 30 days after the decision date, absent good cause), and will reset the time for appeal to the Federal Circuit.
Director Review or Rehearing–Not Both
Under the proposals in the NPRM, the parties would be limited to requesting either Director Review or a rehearing by the original panel, but not both. Requests for both would be treated as a request for Director Review only. However, a party may request Director Review of a decision by a panel granting rehearing of a prior PTAB decision that modifies the holding or result of the underlying decision. For example, if the Board changes the determination of a Final Written Decision for certain claims from unpatentable to not unpatentable in a rehearing decision, the petitioner may file a Request for Director Review of that new determination as to those claims. By contrast, a Request for Director Review is not available if the panel provides a decision addressing the arguments in the request for rehearing but does not modify the underlying holding or result, or denies the request for rehearing without further explanation.
Sua Sponte Review
In addition to allowing parties to request Director Review of certain decisions, the proposed NPRM would permit the Director to order Director Review sua sponte at any point within 21 days after the expiration of the period for filing a request for rehearing pursuant to § 42.71(d). In contrast, under the current interim process, sua sponte Director Review is typically reserved for issues of “exceptional importance,” or any other issue the Director deems appropriate. Notably, the proposed rules do not set a specific standard for sua sponte review beyond the discretion of the Director. If the Director initiates a sua sponte review, the parties and the public will be given notice and potentially an opportunity for briefing.
Consistent with the interim process, under the NPRM proposals, a party may appeal a Director Review decision of a final written decision, or rehearing thereof, to the Federal Circuit using the same procedures for appealing other PTAB decisions under 35 U.S.C. §§ 141(c), 319.
Takeaways:
The NPRM proposes rules related to Director Review that are in some cases consistent with the current interim process, and in others cases divert therefrom. Public comments on the NPRM can be submitted through the Federal eRulemaking Portal at www.regulations.gov, Docket No. PTO-P-2024-0014. The last day for submissions is June 17, 2024.
