USPTO Locks in Director Review Rule, 3 Years After Arthrex

On September 30, U.S. Patent and Trademark Office Director Kathi Vidal issued a final rule to solidify the process for director reviews of some Patent Trial and Appeal Board (PTAB) decisions. This move follows the U.S. Supreme Court's mandate in U.S. v. Arthrex, which was decided in June 2021. The new rule, effective October 31, will end interim procedures that have been in place since the Arthrex ruling.

The rule expands the director's authority to review various decisions and evidence in America Invents Act (AIA) reviews, including seldom-used derivation proceedings. It allows the director to review not only institution and final decisions but also adverse judgments, dismissals, and interlocutory decisions on matters like discovery and supplemental evidence.

Finnegan partner Cory Bell told Law360, "There may be a wider scope of things we can highlight in director reviews than we have been for the past few years. There's just a lot more stuff to think about-ways you might use it now that you wouldn't use it before."

Cory added that having a final rule in places that "solidifies the process" should make the review process more predictable for parties involved. "It's less likely that they're going to change from the time when you give your client advice when you file the petition, to when you get toward the end of the petition. The rules don't change that fast once they're finalized."

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