PTAB Clarifies Director Rehearing Details

Arthrex Information Updated

The USPTO requested feedback on the interim Director review process and, in response to that feedback, has updated the Arthrex Q&As. In response to questions from the public, the current update revises several existing Q&As and adds new Q&As to clarify certain aspects of the interim Director review process. For example, the current update clarifies information about party requests and explains the process used internally at the Office.

Specific updates clarify:

" After 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.

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.

The Office anticipates that it will provide more information and updates in the near term.

So, the typical case will not include multiple rehearing options, and, it would seem unlikely that the Director will find interest in the typical case. It remains to be seen how the Director will decide denials (i.e., in a summary, Rule 36 CAFC fashion, or in a detailed opinion)

Also, while there was an initial concern (myself included) that the Interim Director could not decide these issues as he was not politically appointed, that turns out to be incorrect. For example, the Interim Director continues to issue patents, and is empowered to do so for a limited time while a new Director is selected.  The new rehearing duties are likewise enabled for a limited time.

Scott A. McKeown is an author of the Patents Post Grant