Arthrex Q&As

The Arthrex Q&As were updated on July 20, 2021, to add new questions A6–A8 and D1–D3 and modify questions A2, A3, and B2 for clarity in response to questions and comments from stakeholders. The Office expects to provide additional information and updates soon.

A. Effect of Arthrex on PTAB proceedings general


A1. Q: How are PTAB proceedings impacted by Arthrex?
A:
Arthrex provided the Director authority to review a PTAB final decision in an inter partes review by rehearing. If initiated sua sponte by the Director, the parties to the proceeding will be given notice and may be given an opportunity for briefing. Additionally, parties to a PTAB proceeding will be able to request review. The Director’s review may address any issue, including issues of fact and issues of law, and will be de novo.

A2. Q: What is the mechanism to request review by the Director?
A:
As an interim measure, the mechanism to request review by the Director is similar to the current rehearing procedures under 37 C.F.R. 42.71(d) and Standard Operating Procedure 2. Parties may request Director review of a final decision 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. The filed Request for Rehearing by the Director must satisfy the timing requirements of 37 C.F.R. 42.71(d), i.e., filing within 30 days of the entry of a final written decision or a decision granting 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.

A3. Q: Can a party request both Director review and panel rehearing after issuance of a final written decision?
A: No, 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.

A4. Q: Will the USPTO provide more information about the Director review process?
A:
Yes, the current process is envisioned as an interim procedure that may change based on input from the public and experience with conducting Director reviews. More information and updates will be provided in the near term to facilitate transparency of the process.

A5. Q: Will the USPTO seek public feedback on the Director review process?
A: Yes, the USPTO will seek feedback from the public on the Director review process, including after the Office provides additional information and updates in the near term. Information on how to provide feedback on the interim procedure is below.

A6. Q: When might the Director sua sponte initiate Director review? 
A: The Director has the option to sua sponte initiate Director review of any final written decision or corresponding decision on rehearing (whether denying or granting rehearing) at any point before the filing of a notice of appeal under 37 C.F.R. § 90.3 or before the time for filing such a notice has passed.

A7. Q: Can a party make new arguments or submit new evidence with a Request for Rehearing by the Director?
A: No, although the Director’s review will address any issue de novo, a request for Director review is not an opportunity for a party to make new arguments or submit new evidence. However, the Director may choose to request additional briefing on identified issues, and, in appropriate circumstances, provide the parties with an opportunity to submit new evidence. 

A8. Q: Are there page limits for a Request for Rehearing by the Director?
A: Yes, the page limit for a Request for Rehearing by the Director is 15 pages, similar to current page limits under 37 C.F.R. 42.24(a)(1)(v).

B. Effect of Arthrex on ongoing PTAB proceedings


B1. Q: When will a Request for Rehearing by the Director be considered timely?
A: The time for filing a request for rehearing is set forth in 37 C.F.R. § 42.71(d) and requires a party to request rehearing within 30 days of the entry of a final written decision. Those same time requirements apply to the filing of a Request for Rehearing by the Director.

B2. Q: Will the USPTO accept a late-filed Request for Rehearing by the Director?
A:
As a general matter, the Director will not consider untimely requests for rehearing of decisions. However, the Director may choose to extend the rehearing deadline for good cause if a party requests such an extension before the due date for a request for rehearing. Parties whose deadline for requesting rehearing had expired at the time the Arthrex decision issued may request a waiver of the deadline, so long as they request the waiver before the due date for filing a notice of appeal under 37 C.F.R. § 90.3. A request for Director review in a case where a decision has been remanded to the USPTO by a federal court for further proceedings consistent with Arthrex will be considered timely if the party requests Director review within 30 days of the remand order.

B3. Q: Will the Precedential Opinion Panel (POP) process remain in effect?
A:
Yes, the POP process is unchanged at this time. However, the Office will be reviewing the POP process in view of the Director review process and welcomes public suggestions regarding potential changes.

B4. Q: May third parties request Director review of a particular case?
A:
No, third parties may not request Director review of a particular case.

B5. Q: May third parties submit comments concerning Director review of a particular
case?
A:
At this time, third parties may not submit comments concerning Director review of a particular case unless such participation is requested by the Director. 

C. For additional questions about Arthrex


C1. Q: Will the USPTO charge a fee for a Request for Rehearing by the Director?
A:
During implementation of the interim procedure, the USPTO will not charge a fee for a Request for Rehearing by the Director. The USPTO will consider whether to charge a fee for such requests in the future.

C2. Q: If a party has additional questions regarding the implications of Arthrex for a specific proceeding, what should the party do?
A:
Submit case-specific questions (e.g., request a call with the Board) via email to Trials@uspto.gov.

C3. Q: If a member of the public has a general question regarding Arthrex, but does not
have a case pending before the Board, what should they do?
A:
Submit general Arthrex-related questions via email to Trials@uspto.gov.

C4. Q: If a member of the public has a suggestion about the Director review process, what
should they do?
A:
Submit Director review suggestions via email to Director_Review_Suggestions@uspto.gov.

D. Interim internal process for Director review


D1. Q: What happens to a Director review request when it is received by the USPTO? 
A:
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.

D2. Q: What criteria does the advisory committee use when evaluating Director review requests?
A:
Although 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.

D3. Q: How will the Director identify decisions for sua sponte Director Review?
A:
Even if a party does not request Director review, the Director may choose to conduct a sua sponte Director review of any final written decision or corresponding decision on rehearing (whether denying or granting rehearing). The PTAB has an internal management review team that ensures all PTAB final written decisions are reviewed using many of the same criteria noted above. The internal management review team will alert the Director to decisions that may warrant Director review.