PTO Allows Another Bite at the Apple

On July 24, 2023, the United States Patent and Trademark Office changed its procedures for the PTO Director’s review of certain decisions by the Patent Trial and Appeal Board.  The decisions in question are those decisions of the Patent Trial and Appeal Board to deny or grant petitions to institute proceedings under the America Invents Act.  Those proceedings include inter partes review and post grant review.  This change follows two years of an interim process and public comment period.

Before this change, a party who filed a petition in the PTAB to challenge a patent, or a patent owner against whom such a petition was filed, could not attack the decision denying or granting institution of the proceeding, except for requesting rehearing by the Board panel who had made the decision.  The PTO Director could, on her own, decide to review the Board’s decision, but the parties could not ask for that review themselves.  Nor could the decision to deny or grant institution be appealed to the Federal Circuit Court of Appeals.  This meant that there was no real way for a party to obtain a new review of the decision denying or granting institution.

Under the new procedures, however, either the petitioning party or the patent owner may request that the Director review the decision.  The request must be based on an abuse of discretion by the Board or it must raise an important issue of law or policy.  A party cannot request both Director review and rehearing by the Board panel.  No new evidence or argument can be submitted to the Director for this review.

Once a request for Director review is filed and has been deemed compliant, it will be sent to an Advisory Committee.  The Advisory Committee will evaluate the request and give the Director a recommendation as to whether the review should be granted.  The Director will then review the request and determine whether it should be granted.

Because it is expected that many parties will want to seek review of the decision to deny or grant institution of these proceedings, the Director has set up a panel, the “Delegated Rehearing Panel,” to help her review the decisions.  The Director may send requests to the Delegated Rehearing Panel to obtain its recommendation as whether the review should be granted.

If the review is granted, the Director will review the Board’s decision for abuse of discretion, or, if the request raises an important issue of law or policy, under a de novo review standard.  The Director may affirm, reverse, modify, vacate, or remand (in whole or in part) the Board’s decision.