On July 24, the USPTO announced a revised Director interim review process. Although the USPTO in July 2022 had requested comments on its director review process and the comment period was closed on October 19, 2022, the USPTO has still not formalized the process or published any proposed rules to implement it. Instead, it revised its interim review process.
The revised process has changed:
Director review of institution decision: One can now request review of (1) decision whether to institute a trial, (2) final written decision, and (3) decision granting a request for rehearing. Under the prior guidelines a review could be requested only after a final written decision (FWD).
Delegated rehearing panel: The guideline allows the Director to delegate the review of a PTAB decision to a “Delegated Rehearing Panel” (DRP) which is a three-member panel selected by the Director from Chief Judge, Deputy Chief Judge, Vice Chief Judges, and Senior Lead Judges, excluding judges who served on the original Board panel for the case under review or otherwise have a conflict with the case. Only one rehearing request is allowed.
Precedential Panel: Eliminated and replaced with an Appeals Review Panel (ARP). The Director may convene the ARP sua sponte to review a PTAB decision or a decision in an ex parte appeal, reexamination appeal, or reissue appeal. The ARP will be selected by the Director and, by default, consists of the Director, the Commissioner for Patents, and the Chief Judge of the Patent Trial and Appeal Board. Request for an ARP review will not be accepted, and ARP decisions are non-precedential by default. Nominations for precedential or informative designation may be submitted using the PTAB Decision Nomination web form at: https://www.uspto.gov/patents/ptab/ptab-decision-nomination, which may be submitted anonymously, or by sending an email to PTAB_Decision_Nomination@uspto.gov.
A party dissatisfied with a PTAB decision continue to have two options: (i) it can request rehearing before the same panel of judges, or (ii) it can request Director Review of the decision. It cannot do both. In an inter partes review, post grant review, and derivation proceedings, a party may submit a Director Review request by concurrently: (1) filing a Request for Rehearing by the Director in the Patent Trial and Appeal Case Tracking System (P-TACTS); and (2) emailing the Director at Director_PTABDecision_Review@uspto.gov, and copying counsel for all parties to the proceeding. A Director Review request is not perfected until both submissions are made.
The USPTO continues its current practice of avoiding proceeding under Administrative Procedures Act by issuing guidelines rather than promulgating rules.
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