Boardside Chat Sheds Light On Arthrex Director Review Procedure

by | Jul 7, 2021 | PTAB News

By Marlee Hartenstein and Matt Johnson –

In its July 1st Boardside Chat, the PTAB discussed the Supreme Court’s recent Arthrex decision and the interim procedure for Director review.  The panel included Drew Hirschfeld (Performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO), Scott R. Boalick (Chief Administrative Patent Judge), Jacqueline W. Bonilla (Deputy Chief Administrative Patent Judge), and Scott C. Weidenfeller (Vice Chief Administrative Patent Judge).

As we’ve discussed in previous posts, the Supreme Court held in Arthrex that the USPTO Director has the discretion to review PTAB final written decisions.  Shortly after the Court’s decision, the USPTO issued guidance on the interim procedure for Director review.  In this interim procedure, Director review may be (1) initiated sua sponte by the Director, or (2) requested by a party to a PTAB proceeding.  Currently, a requesting party need only file a request for rehearing in the E2E System and submit a notification of that request by email to [email protected] to be considered for Director review.

The Boardside Chat provided clarity on several different aspects of this process, including how Director review interacts with the existing procedures for requesting a rehearing by the PTAB.  Per the PTO’s guidance, a party may request Director review or, in the alternative, rehearing by the original PTAB panel.  That is, if a party requests Director review, and that review is not granted, the party may not then request PTAB panel rehearing.  But if a party requests rehearing by the original PTAB panel, and that request is granted, parties may request Director review of the rehearing decision, whether or not they originally requested Director review.  Given the amount of questions received regarding the interplay between these two processes, the PTO provided the following flowchart:

Another topic of conversation was the role, if any, Drew Hirschfeld would play in the Director review process.  Hirschfeld is currently performing the functions and duties of the Director of the USPTO until a permanent director is politically appointed.  In response to questions as to whether the review process will be deferred until the new director is in place, Hirschfeld noted that he intends to make decisions in his capacity as acting director until the political appointment occurs.

Other topics covered during the Boardside Chat were the timing to request Director review, the impact Director review would have, if any, on the Precedential Opinion Panel, and the factors to consider when requesting Director review.  Notably, the panel invited the public to comment on the current procedure, highlighting the fact that its guidance is interim and subject to change.  For more information, see the Boardside Chat presentation or the USPTO’s Arthrex Information page.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.