The Under Secretary of Commerce for Intellectual Property and Director of the USPTO (Director) is a statutory member of the Board. 35 U.S.C. § 6(a). The Director is “responsible for providing policy direction and management supervision for the Office,” id. § 3(a)(2)(A), and has “the authority to govern the conduct of proceedings in the Office,” id. § 2(b)(2)(A). The Director has an interest in creating binding guidance to increase fairness and efficiency, and for establishing consistency across Board proceedings.
In United States v. Arthrex, Inc., the Supreme Court explained that “constitutional principles chart a clear course: Decisions by [administrative patent judges (APJs)] must be subject to review by the Director.” 141 S. Ct. 1970, 1986 (2021). The Court held that “the Director has the authority to provide for a means of reviewing PTAB decisions” and “may review final PTAB decisions and, upon review, may issue decisions himself on behalf of the Board.” Id. at 1987 (citations omitted). Additionally, the Court in Arthrex made clear that “the Director need not review every decision of the PTAB” nor did it require the Director to accept requests for review or issue a decision in every case. Id. at 1988. Instead, “[w]hat matters is that the Director have the discretion to review decisions rendered by APJs.’” Id.; see also Arthrex, Inc. v. Smith & Nephew, Inc., 35 F.4th 1328, 1338 (Fed. Cir. 2022) (noting that the Supreme Court “did not hold that the Director must rehear every Board decision, nor did it require the Director to issue a decision in response to every rehearing request”).
Accordingly, following the statutory authority provided to the Director by Congress and the constitutional principles explained by the Supreme Court, the Office set forth an interim process for the Director to review Board decisions on June 29, 2021. On April 22, 2022, the Office published an “Interim process for Director Review web page,” setting forth more details on the interim process and some additional suggestions for parties who wish to request Director Review. The Office further updated that guidance on May 25, 2022, and June 17, 2022. The Office sought public feedback on the interim process through a Request for Comments posted in the Federal Register on July 20, 2022. The comment period closed on October 19, 2022. The Office received 4,377 comments which are publicly available.
In response to those comments and as the Office works to formalize the Director Review process, the Office sets forth the following revised interim process for the Director to review Board decisions. Further, although the Court’s decision in Arthrex “concern[ed] only the Director’s ability to supervise APJs in adjudicating petitions for inter partes review,” and “[did] not address the Director’s supervision over other types of adjudications conducted by the PTAB,” the Office also provides a mechanism for Director Review of certain other proceedings before the Board, i.e., post grant review proceedings, derivation proceedings, and decisions whether to institute in AIA trial proceedings. 141 S. Ct. at 1987.