On September 30, 2024, the USPTO issued a final rule governing the process for Director Review of proceedings under the AIA. This formalized the USPTO's interim Director Review procedures implemented by the USPTO following the Supreme Court's decision in United States v. Arthrex, 141 S. Ct. 1970, 1986 (2021). The USPTO expects the final rule will promote "accuracy, consistency, and integrity of PTAB decision-making in AIA proceedings."
The final rule provides that a party to an AIA proceeding may request Director Review in that proceeding of any:
- Decision on institution
- Final Decision (defined as a final written decision in an IPR or PGR proceeding or a final decision in a derivation proceeding)
- Decision granting rehearing of a decision on institution or a final decision
- Other decision concluding an AIA proceeding (e.g., a termination due to a grant of adverse judgment)
The Director may also grant review of those same decisions sua sponte within 21 days after the expiration of the period for filing a request for rehearing, absent exceptional circumstances. Further, the Director may delegate review of a decision.
The final rule also details the timing and format of the request for Director Review. The request must be filed within the time period set forth in § 42.71(d) unless an extension is granted by the Director upon a showing of good cause. The request must comply with the format requirements of § 42.6(a) and is limited to 15 pages as provided in § 42.24(a)(1)(v). Absent Director authorization, no new evidence is permitted.
Lastly, the final rule clarifies the time by which an appeal to the Federal Circuit must be filed. Typically, a request for Director Review or the initiation of review does not stay deadlines for parties in the underlying proceeding. But, a request for Director Review of a final decision, a decision granting rehearing of a final decision, or any other appealable decision concluding a proceeding will reset the time for appeal until all issues on Director Review are resolved. Director Review decisions on decisions on institution are not appealable.
Takeaway:
The USPTO's final rule on Director Review codifies the scope of Director Review and formalizes many of the same interim USPTO procedures already in place post-Arthrex. Parties may consider Director Review in an applicable proceeding. The final rule goes into effect on October 31, 2024.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
