USPTO rejects first requests for review by Director of IPR decisions after Arthrex – intellectual property
United States: USPTO rejects first requests for review by Director of IPR decisions after Arthrex
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Following the recent Supreme Court ruling in United States v Arthrex, Inc., the USPTO has established an interim review procedure in which the review of a final written decision of the PTAB can be initiated by the Director or requested by a party to a PTAB proceeding. In its first decisions on the Director’s review requests, the USPTO rejected the requests and noted that “the final written decision of the Patent Trial and Appeal Board in this case is the final decision of the agency”. While the Patent Office has indicated that the Director of Revision has the authority to deal with “any matter, including questions of fact and law”, the Acting Director has refused to deal with questions of fact or law. case-specific in decisions. The cases are IPR2020-00081 and IPR2020-00320.
The decisions follow recent USPTO post-Arthrex review procedure which provides for the following:
- The Director’s review may deal with any matter, including questions of fact and law, and will be de novo.
- The request must be made within 30 days of the entry of a final written decision or rehearing decision by a PTAB panel.
- Once a final written decision has been made, a party may request a review by the Director or, alternatively, a rehearing by the original PTAB committee. If the party requests only a review by the Director and that review is not granted, then the party cannot request a rehearing by the PTAB committee. In the event that the new panel hearing is granted, the parties will be entitled to request the Director to review the decision of the new panel hearing, whether or not they originally requested a review by the Director.
- There is no charge for filing an application under the provisional procedure.
- The interim procedure may change based on public comment and the Director’s experience in conducting reviews.
Additional details on the interim review process are provided on the USPTO Arthrex information page.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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