USPTO Issues Guidance On An Interim Director Review Process Following Arthrex

On June 29, 2021, the Office issued the following guidance on an interim Director review process following the Supreme Court’s decision last week in United States v. Arthrex, Inc:

In this interim procedure, [Director] review may be initiated sua sponte by the Director or be requested a party to a PTAB proceeding. Parties may request Director review of a final written decision in an inter parties review or a post-grant review by concurrently (1) entering a Request for Rehearing by the Director into PTAB E2E and (2) submitting a notification of the Request for Rehearing by the Director to the Office by email to Director_PTABDecision_Review@uspto.gov, copying counsel for all parties by email.

Additional details on the interim Director review process can be found here. In that Q&A material, the office notes that “[t]he filed Request for Rehearing by the Director must satisfy the timing requirements of 37 C.F.R. 42.71(d), filing within 30 days of the entry of a final written decision or a decision on rehearing by a PTAB panel. A timely Request for Rehearing by the Director will be considered a request for rehearing under 37 C.F.R. 90.3(b) and will reset the time for appeal or civil action as set forth in that rule.”

The Office’s guidance states that a party can request Director review with panel hearing being sought as alternative relief (and in the event panel rehearing is granted, Director review will then be directly available). However, if a party requests only Director review and that request is not granted, there is no subsequent ability to request panel hearing. The Q&A material seems to suggest that serial panel rehearing and then Director review petitions may be allowed, but this point is not entirely clear. At present, the USPTO will not charge a fee for a request for Director review.

The PTAB is hosting a “Boardside Chat” webinar on Thursday, July 1, 2021, at 10 am ET to discuss the Arthrex decision, explain the interim procedure for Director review of PTAB decisions, and answer questions.