On July 20, 2021, and in response to the Office’s request for feedback on the interim Director review process, the USPTO has updated and revised its Arthrex Q&As to clarify certain aspects of the interim procedure.
For example, and as discussed in my June 29, 2021 post, the Office’s original guidance was unclear as to whether serial panel rehearing and then Director review petitions would be allowed. The Q&A now makes clear that a party cannot request both Director review and panel rehearing after issuance of a final written decision:
[A]fter a panel issues a final written decision in an inter partes review or a post-grant review, a party may request either Director review or rehearing by the original PTAB panel, but may not request both. If a party requests Director review, and that review is not granted, the party may not then request PTAB panel rehearing. If a party requests rehearing by the original PTAB panel and the panel denies rehearing, the party may not request Director review of that decision. In the event a panel grants rehearing, however, a party may request Director review of that panel decision following the same procedure described above. If a party requests both Director review and panel rehearing (either together, or in the alternative) of a final written decision or a decision granting rehearing by a PTAB panel, the Office will treat such a request as a request for Director review.
The Office also provided the following guidance as to what happens to a Director review request when it is received by the USPTO:
Requests for Director review will be evaluated by an advisory committee established by the Director. That committee will advise the Director on whether decisions merit review. The advisory committee will include members from various business units within the Office, such as the Office of the Under Secretary, the PTAB, the Office of the Commissioner for Patents, the Office of the General Counsel, and the Office of Policy and International Affairs. The Director will determine whether review will be granted or denied.
As to the criteria for evaluating whether to grant or deny a request for Director review, the Q&A’s state that “[a]lthough there is no exclusive list of criteria, decisions may warrant review if they include, for example, material errors of fact or law, matters that the Board misapprehended or overlooked, novel issues of law or policy, issues on which Board panel decisions are split, issues of particular importance to the Office or patent community, or inconsistencies with Office procedures, guidance, or decisions.”
We will continue to monitor developments in this area and provide updates on our website.