Send the USPTO Your Comments on Director Review, POP and PTAB Internal Review Processes

The U.S. Patent and Trademark Office (USPTO) yesterday announced and today published an official Request for Comments on the interim process for Director Review of Patent Trial and Appeal Board (PTAB) decisions, the Precedential Opinion Panel (POP) process and the interim process for PTAB decision circulation and internal PTAB review. USPTO Director Kathi Vidal released updated interim guidance on Director Review and PTAB decision circulation/internal review soon after taking office in April and has been accepting preliminary feedback via a dedicated email address, but the comments received in response to this request will officially  inform upcoming notice-and-comment rulemaking to formalize these processes, as well as any modifications to the interim processes prior to formalization. Comments are due by September 19, 2022.

The Office first issued interim guidance for Director Review pursuant to the Supreme Court’s decision in United States v. Arthrex, Inc. et. al. in June 2021, and Vidal most recently announced updates to the process in May and June 2022. The June 2021 guidance was issued by Drew Hirshfeld, who was then Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. The guidance at the time said that “the Director may initiate Director review of any PTAB final written decision sua sponte, and a party to a PTAB proceeding may request Director review of an [inter partes review] IPR or [post grant review] PGR final written decision. To request Director review, a party to a final written decision must concurrently: (1) enter a Request for Rehearing by the Director into PTAB E2E, the PTAB’s filing system, and (2) submit a notification of the Request for Rehearing by the Director to the USPTO by email to [email protected] , copying counsel for all parties.” Requests for Director review of institution decisions are not accepted and third parties may not request Director review or submit comments on a case, unless requested by the Director. While the Director Review process does not alter the current process for requesting POP review, the Office is seeking comment on whether the POP process should be modified or eliminated in view of the Director Review process.

However, in her May 2022 update, Vidal explained that “although the Office does not accept requests for Director review of institution decisions in [America Invents Act] AIA proceedings, the Director has always retained and continues to retain the authority to review such decisions sua sponte after issuance.” Vidal invoked this authority in early June, when she announced that she would review the institution decisions in two controversial cases, OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064 and Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229. In July, she called for amicus briefs on a limited number of issues in those cases.

In her June 2022 update to the interim Director Review process, Vidal encouraged parties to identify any issues of first impression in their email requests for Director Review and also asked for preliminary feedback at a dedicated email address in anticipation of today’s Request for Comment.

In a conversation with IPWatchdog Founder and CEO Gene Quinn in June, Vidal said that “it helps when parties focus the review on particular issues,” and indicated that issues of first impression fall under one of the three main categories of cases warranting Director Review. The others are when there is clear error and when there’s a need to clarify guidance or how the Office is interpreting the law.

Parties are presently limited to either requesting rehearing by the original PTAB panel or Director Review. Whether there should be an option to request both is the fourth of 14 questions identified in the Request for Comment on which the USPTO is seeking input.

According to today’s notice, “as of July 5, 2022, the USPTO had received 204 requests for Director review under the interim process. Of those requests, the Director review process was completed for 198 requests. Of the 198 completed requests, 5 requests were granted, 1 request was withdrawn, and the remaining requests were denied.” This does not count the two institution decisions in OpenSky and PQA for which Vidal sua sponte granted Director Review.

With respect to the interim process for PTAB Decision Circulation and Internal PTAB Review, the Office has been using an interim process since May 2022 “to promote consistent, clear, and open decision-making.” The process entails certain types of PTAB decisions being circulated to a pool of non-management judges (the Circulation Judge Pool (CJP)) prior to issuance. These decisions include “all AIA institution decisions; AIA final written decisions; AIA decisions on rehearing; decisions on remand from the Federal Circuit; inter partes reexamination appeal decisions; and designated categories of ex parte appeal, ex parte reexamination appeal, and reissue appeal decisions,” as well as other types of decisions judges may see fit. This interim process was addressed in depth in a guest post published by IPWatchdog last month in which Jessica Kaiser of Arnold & Porter Kaye Scholer LLP said that the guidance was a mostly positive step that will ensure transparency, but that “the Director and PTAB Executive Management should proactively look for issues that would benefit from additional guideposts to ensure consistency of panel decision-making.”

Below is the full list of questions on which the USPTO is seeking comment:

1. Should any changes be made to the interim Director review process, and if so, what changes and why?
2. Should only the parties to a proceeding be permitted to request Director review, or should third-party requests for Director review be allowed, and if so, which ones and why?
3. Should requests for Director review be limited to final written decisions in IPR and PGR? If not, how should they be expanded and why?
4. Should a party to a proceeding be able to request both Director review and rehearing by the merits panel? If so, why and how should the two procedures interplay?
5. What criteria should be used in determining whether to initiate Director review?
6. What standard of review should the Director apply in Director review? Should the standard of review change depending on what type of decision is being reviewed?
7. What standard should the Director apply in determining whether or not to grant sua sponte Director review of decisions on institution? Should the standard change if the decision on institution addresses discretionary issues instead of, or in addition to, merits issues?
8. Should there be a time limit on the Director’s ability to reconsider a petition denial? And if so, what should that time limit be?
9. Are there considerations the USPTO should take with regard to the fact that decisions made on Director review are not precedential by default, and instead are made and marked precedential only upon designation by the Director?
10. Are there any other considerations the USPTO should take into account with respect to Director review?
11. Should the POP review process remain in effect, be modified, or be eliminated in view of Director review? Please explain.
12. Are there any other considerations the USPTO should take into account with respect to the POP process?
13. Should any changes be made to the interim PTAB decision circulation and internal review processes, and if so, what changes and why?
14. Are there any other considerations the USPTO should take into account with respect to the interim PTAB decision circulation and internal review processes?

Comments should be submitted via the Federal eRulemaking Portal entering docket number PTO-P-2022-0023 on the homepage and clicking “Search.” Choose the reference to this Request for Comments from the list and click on the “Comment Now!” icon, complete the required fields, and enter or attach your comments. Attachments to electronic comments will be accepted in ADOBE® portable document format or MICROSOFT WORD® format.

Additional questions should be directed to Kalyan Deshpande, Vice Chief Administrative Patent Judge; Amanda Wieker, Acting Senior Lead Administrative Patent Judge; or Melissa Haapala, Vice Chief Administrative Patent Judge, at 571-272-9797.

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