After the Supreme Court's decision in United States v. Arthrex, Inc., the Patent Office implemented an interim process for the Director to review Patent Trial and Appeal Board decisions in AIA trials. The Office sought public feedback on the process last year (link) and received more than 4,000 responses (link)! The process has yet to be formalized via traditional notice and comment rulemaking, though someday, perhaps, it will. Until then, the Patent Office continues to offer new updates and information, most recently on July 24, 2023.
- Expansion: The Director review process is expanding to permit parties to request review of the Board's institution decisions in AIA trials. To minimize the potential avalanche of such requests, the Office explains the limited instances where the Director may review institution and final written decisions: (i) an abuse of discretion or (ii) important issues of law or policy. Most decisions don't implicate these instances, but aggrieved parties will of course argue decisions in their cases do.
- Delegation: To deal with the potential avalanche, the Director may delegate her review to two new panels. The Delegated Rehearing Panel (DRP) will review Board institution and final written decisions in AIA trials. The DRP will include senior administrative patent judges who took no part in the decision being reviewed. The Appeal Review Panel (ARP) will review the Board's ex parte appeal decisions (concerning ex parte prosecution, reexamination, and reissue) when the Director sua sponte deems review is needed—patent applicants may not request Director review. By default, the ARP includes the Director, the Commissioner for Patents, and the Board's Chief Judge.
- Guidance: The Office updated its guidance on issues the Director will consider when reviewing Board decisions (regardless of delegation), offered guidance on instances where the Director may initiate review without a request, and explained what may transpire on remand from the Director's decisions.
- POP's Retirement: The Office is retiring the rarely used Precedential Opinion Panel (POP) process responsible for issuing decisions that bind future Board panels. In doing so, the Director removed the "precedential" designation from an earlier POP panel in Proppant Express Investments, LLC v. Oren Techs., LLC, Case No. IPR2018-00914, Paper 38 (PTAB 2019), which concluded that 35 U.S.C. § 315(c) permits a petitioner to be joined to an AIA trial proceeding in which it is already a party and permits joinder of new issues to an existing proceeding under certain circumstances.
Success in seeking Director review is not common. Among the hundreds of Board decisions issued thus far this year, only about a dozen have been the subject of Director review (link). Rare is the case where the Board is establishing precedent or has so abused its discretion that the Director must intervene to offer corrective action. Typically, the Board is applying ordinary principles of claim construction and assessing routine anticipation and obviousness issues. And while the Board may get it wrong sometimes, its final decisions are appealable to the Federal Circuit.
But appealing is time- and resource-intensive. The deck is stacked against the appellant given, for example, the deferential standard the court applies in reviewing the Board's fact-finding. According to the Court's statistics (link), the court reverses only 10% of the appealed Board judgments it reviews. So, the opportunity to seek Director review through these new independent panels should be welcome news to those on the losing end of Board decisions. And the DRP will be particularly attractive to patentees whose patents are the subject of AIA trial institution decisions—decisions that are not appealable. More information about the process is available at this link.
Patent applicants and their attorneys and agents more focused on prosecution of patent applications should find helpful not only the ARP process (details at this link), but also the Office's July 13, 2023, memo that explains some inner workings of how the Board decides ex parte appeals. The memo includes a discussion of the following topics, among others:
- Instances where the Board will not decide all appealed issues.
- How, among various appealed issues, the Board distinguishes and addresses only the dispositive ones when potentially reversing the examiner.
- How the Board handles groupings of claims that stand or fall together with each appealed rejection.
- How the Board treats (i) decided and undecided petitions submitted to the Director during prosecution, (ii) appeals of obviousness-type double patenting rejections, and (iii) new grounds for rejection presented in the examiner's answer to the applicant's appeal brief.
- What circumstances may compel the Board to issue a new ground for rejection, and the accompanying due process the applicant.
The Board's 10-year trend in reducing the number of pending ex parte appeals has been impressive (see below). The new ARP and the explanations of the foregoing topics should further help applicants navigate appeals and instill a higher level of confidence in the process.
Appeal and Interference Statistics, Patent Trial and Appeal Board, June 2023 (link)
The Board will host a webinar discussing the DRP and ARP processes on August 17, 2023 (link).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
