New PTAB Rule – Applicants Can Now Ask for the Director’s Review of PTAB Decisions

The United States Patent and Trademark Office (USPTO) Director Vidal announced on July 24, 2023, that litigants can now request a review of Patent Trial and Appeal Board (PTAB) decisions to either institute or not institute patent challenges. This is the first time applicants have been permitted to ask the director for a second look at PTAB decisions. Before this new procedure, the director could choose on its own to review such decisions, but litigants could not ask for such a review. Instead, litigants were only allowed to petition the original panel that made the decision to institute or not institute proceedings to reconsider their original decision.

A report indicated that in fiscal year 2022, about 82% of PTAB reviews that were instituted and reached a final decision resulted in at least some claims of the patent being invalidated.

While Director Vidal’s announcement seems to discourage frequent use of the new procedure, stating that requests “shall be limited” to cases involving “an abuse of discretion” or “important issues of law or policy,” not all believe litigants will be so mindful.

This new procedure will appeal to both companies whose challenge has been denied and are facing potentially large damages in an infringement suit as well as patent owners whose patents are being challenged trying to derail a proceeding that often results in invalidity decisions.

It seems Director Vidal anticipates an influx of cases because she has created a new body called the Delegated Rehearing Panel to which she can direct cases that she is unable to process.

Time will tell how many requests for director review are filed and granted and if the director or the Delegated Rehearing Panel will decide them. Stay tuned.

  • John S. Parzych

    John is a shareholder in Fredrikson’s Intellectual Property Group. He is registered to practice before the U.S. Patent and Trademark Office. His practice focuses on patent preparation and prosecution, counseling clients ...

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