by Dennis Crouch
New USPTO Director Kathi Vidal is working through the details of how to run the AIA-Trial Director Review program. For now, she has promised transparency as the interim process is developed and is seeking public input.
- Interim Director Review Process (To be updated as changes are made).
- Status of Director Review Requests
- Provide Suggestions Here: Director_Review_Suggestions@uspto.gov
Once an IPR is instituted, the statute calls for the PTAB to issue a written decision on whether to cancel the challenged claims. That decision is then immediately appealable by the losing party, at least according to the statute. In Arthrex, the Supreme Court held that PTAB judges are not proper principal Officers of the United States and therefore do not have authority to speak for the US on important matters such as cancelling private property rights. The Supreme Court then offered a non-statutory solution of inserting a director-review process following the PTAB decision prior to appeal. The result then is that the decision will be given the imprimatur of the Director who is a Principal Officer since she was appointed by the President and Confirmed by the Senate.
As I mentioned, the new Director Review was created by the Supreme Court on the fly without setting any clear bounds for its procedure or Director reasoning. Questions:
- To what extent can the Director take into account outside lobbying or outside evidence? Lets say, for instance, that the Director reads NYTimes editorials.
- To what extent can the Director base her decision on issues apart from those listed in the IPR statute (e.g,. novelty and obviousness). For instance, is it permissible for the Director to consider US global competitiveness and impact on the marketplace?
- To what extent must the Director personally conduct and decide the reviews rather than delegate that responsibility.
Dir. Vidal is committed to make this an open process and the PTO will likely issue a Request for Comments in the coming weeks.
More from the PTO here.