This webpage contains useful information regarding the implementation of a Director’s Interim Review process in Patent Trial and Appeal Board (PTAB) proceedings following Arthrex.
On June 21, 2021, the United States Supreme Court issued a decision in United States v Arthrex, Inc., Nos. 19-1434, 19-1452, 19-1458, 2021 WL 2519433, dealing with the appointment clause of the Constitution with respect to Administrative Patent Judges (APJs) of the PTAB. The court considered whether APJs are “Principal Officers” who must be appointed by the President with the advice and consent of the Senate, or, as argued by the United States Patent and Trademark Office ( USPTO) and the US government, if they are “lower officers” who may be appointed by the Secretary of Commerce.
Main takeaways from Arthrex decision
In its ruling, the Supreme Court provided a new, tailored remedy to ensure that APJs function as lesser officers. Specifically, the court held “that 35 USC § 6(c) is unenforceable as it applies to the Director insofar as it precludes the Director from reviewing decisions of the PTAB on his own.” The director may conduct such a review and make his own decision. Thereby, Arthrex grants the Director the power to unilaterally review a final decision of the PTAB on inter partes review by a new hearing.
Interim Process for Director’s Review After Arthrex
The Office has put in place an interim director’s review process, in accordance with the Arthrex decision. In this interim proceeding, such a review may be initiated ex officio by the Director or requested by a party to a PTAB proceeding. Parties may request Director’s review of a written final decision through inter-party review or post-grant review by (1) concurrently entering a Director’s Rehearing Request in PTAB E2E and (2) submitting a Notice of Director’s Request for Rehearing to the Office via email to [email protected], copying counsel for all parties via email.
For more details on the Acting Director’s review process, please see Arthrex Questions and answers.
Other Information Regarding the Review Process for Acting Directors
The PTAB is hosting a “Boardside Chat” webinar on Thursday, July 1, 2021 at 10 a.m. ET to discuss the Arthrex decision, explain the interim review process by the PTAB Director of Decisions and answer questions.
If the parties have questions about the impact of the Arthrex decision on the PTAB proceeding, parties may contact the Board at [email protected]
The USPTO is also seeking feedback on the Acting Director’s review process. Suggestions are welcome and can be submitted to [email protected]