On June 21, 2021, the Supreme Court issued its long-awaited decision in United States v. Arthrex, 19-1434, 19-1452, 19-1458. The issue in Arthrex was “whether the authority of Administrative Patent Judges (APJs) to issue decisions on behalf of the Executive Branch is consistent with the Appointments Clause of the Constitution.” The Supreme Court held that “the unreviewable authority wielded by APJs during inter partes review is incompatible with their appointment by the Secretary to an inferior office.” To ensure that APJs function as inferior officers, the Supreme Court issued a tailored remedy – the Director of the United States Patent and Trademark Office (USPTO) has the unilateral authority to review Patent Trial and Appeal Board (PTAB) decisions.
On June 29, 2021, the USPTO issued a notice on how Arthrex will be implemented. Specifically, the USPTO’s solution involves filing a request for rehearing and sending an email to a specific address:
Parties may request Director review of a final written decision in an inter partes 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.
The USPTO’s Arthrex Q&As provides a more detailed description regarding the Director review process. In addition to the parties requesting Director review, the Director can also sua sponte initiate review of a PTAB final decision. All review by the Director will be de novo.
Procedurally, a request for Director review must be filed within 30 days of the entry of the final written decision as set forth in 37 C.F.R. § 42.71(d). A timely request for review by the Director will also reset the timing for appeal or civil action.
The interim rules allow a party that is dissatisfied with a final written decision in an inter partes or post grant review to request Director review or, alternatively, rehearing by the original PTAB panel. For such requests, if the panel grants rehearing, it is still possible to subsequently request Director review. If a party only requests Director review and forgoes a request for rehearing by the original PTAB panel, the party may not request rehearing by the PTAB if the Director denies the request.
Requests for Director review may not be filed by a third party. A third party may also not submit comments regarding any Director review.
The USPTO will not charge a fee for a request for rehearing and encourages parties that have specific questions about implementing Arthrex in a specific proceeding to contact the PTAB by email.
The USPTO is also allowing parties that are dissatisfied with a PTAB decision that can still be appealed to submit a late-filed 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.”
In view of the USPTO’s procedures implementing Arthrex, a party to an inter partes review, a post grant review or a covered business method review that is dissatisfied with the final written decision should consider filing an alternative request for Director review or, in the alternative, rehearing by the original PTAB panel. Doing so will maximize the chances that the written decision will be further scrutinized by the USPTO.