In a previous post from July 2021, we discussed the interim process for Director review in PTAB proceedings post-Arthrex. Since then, only three out of over 175 requests for Director review of a Final Written Decision have been granted, less than a 2% success rate. In November 2021, the Commissioner for Patents and acting Director of the USPTO, Andrew Hirshfeld, issued the first grant of a Petition for Director review on the PTAB’s analysis of the priority date of the patent at issue. In the same month, acting Director Hirshfeld issued a second order granting Director review to resolve an issue with the PTAB’s analysis of nonobviousness in light of a Federal Circuit ruling that vacated a finding of obviousness in a related patent. The third grant of Director review in March 2021 again implicated intervening precedent from the Federal Circuit. This time, the Federal Circuit had overturned the PTAB’s construction of claim terms in a related patent that were “substantially similar” to terms in the patent at issue.
While the rate of grants of Director reviews has been slow to date, this trend may change once the USPTO and its new director, Kathi Vidal, formalize the Director review process. In her May 2022 remarks to the Patent Public Advisory Committee, Vidal stated the USPTO plans to publish a Request for Comments in the Federal Register to gather feedback before formalizing and finalizing the Director review process. Director Vidal notably indicated that she seeks to explore other issues that could warrant Director review. To provide ease in following the status of Director reviews, the PTAB opened a portal that lists Director review grants as well as the statuses of Director review requests. We will continue to cover developments on the PTAB Blog.
- From the three requests that have been granted, petitions for Director review appear to be most successful in cases of inconsistency between PTAB and Federal Circuit decisions.
- The trend in grants of Director review may change following the Request for Comments and subsequent formalization and finalization of the Director review process.
*Ben is a summer associate in Jones Day’s San Francisco Office.
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