On April 16, 2024, the PTAB proposed new rules (“proposed rules”) governing the Director Review process, which would remain consistent with the Interim review process currently in place, and codify those procedures.
The types of cases available for Director Review will remain unchanged from the updated Interim procedures, which were expanded to include the following: (1) an institution decision of an America Invents Act (“AIA”) trial, (2) a Final Written Decision (“FWD”) in an AIA proceeding, and (3) a panel decision granting a request for rehearing of an institution decision on whether to institute a trial or a FWD in an AIA proceeding. The proposed rules clarified that third parties may not request Director Review or correspond with the USPTO regarding a decision unless the Director invites them to do so.
The proposed rules, similar to the Interim process, limit the Director Review of Board institution decisions and grants of rehearing of a decision on whether to institute to requests presenting: (a) an abuse of discretion, or (b) important issues of law or policy. Under the Interim process, requests for Director Review of FWDs or decisions granting rehearings of FWDs, are available for requests presenting: (a) an abuse of discretion, (b) important issues of law or policy, (c) erroneous findings of material fact, or (d) erroneous conclusions of law.
The proposed rules clarified that a party must file a request for rehearing within the time prescribed for a request for rehearing under 37 CFR 42.71(d), and the Director may choose to extend the rehearing deadline for good cause. Filing a request for rehearing will reset the time for Federal Circuit appeal until a time after which all issues on Director Review in the proceeding are resolved.
The proposed rules also clarified that parties are limited to requesting either (1) a Director Review, or (2) a rehearing by the original panel, but not both. Parties can request Director Review of a decision by a panel granting rehearing of a prior PTAB decision, but only where the rehearing decision modifies the result of the underlying decision. An example would be where a rehearing panel changes a FWD finding claims unpatentable to finding claims not unpatentable. However, Director Review is not available for rehearing decisions that do not modify the underlying result or denials of the request for rehearing without further explanation.
The interim process for how the Director Review requests are considered, including consideration by an Advisory Committee remains unchanged. Along with allowing parties to request Director Review, the proposed rules allow a Director to issue sua sponte Director Review decisions, which are typically reserved for issues of exceptional importance. Absent exceptional circumstances, the Director may initiate sua sponte review within 21 days after the expiration of the period for filing a request for rehearing. If Director Review is granted, the Director will issue an order or decision that will be made part of the public record. Director Review decisions (other than institution decisions) are appealable to the Federal Circuit. Finally, the proposed rules allow the Director to delegate review of a Board decision at their discretion.
Comments for consideration on the proposed rules are open until June 17, 2024.
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The authors would like to thank April Breyer Menon for her contributions to this article.
