What will Arthrex review look like? – Intellectual property

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United States: What will Arthrex review look like?

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Last week, the Supreme Court issued its ruling in United States v Arthrex, Inc. As explained in more detail in our article of June 24, 2021, after having ruled that “the non-revisable power exercised by the APJs during the inter partes examination is incompatible with their appointment by the secretary to a lower function”, the Court has concluded [must] have the discretion to review the decisions rendered by the APJs “in between the parties journals (DPI). Slip Op. At 19, 21. Indeed, the Court seems to suggest that the power of the Director to review the decisions of the PTAB could be quite broad. For example, the Court explained that “[i]if the director had to have the “Authority to take control” of a PTAB procedure, the APJs would function properly as inferior officers “and that”[t]The director can conduct such a review and make his own decision. Identifier. at 21-22 (emphasis added). However, since such a review of the director was not provided for by Congress in the America Invents Act, this naturally raises questions about how this authority will be exercised.

The PTO has just issued guidelines for an “Interim Director’s Review Process” (discussed in more detail below), but will be soliciting public comments on the review process.

A fundamental question is whether the parties should have to ask the Director for a review of a final written decision. A simple approach may be for the manager to automatically review all decisions and only publish the decisions he deems appropriate. However, such a simple approach could lead to challenge whether the director correctly exercises this power of review.

If the Director allows requests for review, several questions arise as to how this process will work. For example:

  • The interim process is similar to the current request for a Prior Opinion Panel (POP) review process – will the final process be? The Director could decide to use the current POP review system, except that he could be the sole arbiter of such requests. A detailed discussion of the POP review process is available here.
  • Will the director be required to explain the reason for denying a request for review? Summary denials of requests for review would be an effective way to resolve the likely flood of requests. However, it would also likely raise the question of whether the Director is properly exercising this power of review.
  • Will the director delegate this power of review to his subordinates? In practice, the director may need to delegate some of this review power in order to deal with the potentially large number of review requests. However, this may raise the same issues of “political accountability” that the Court found unconstitutional.

Regardless of how the Director implements the review process, there are several other questions that will require answers. For example:

  • What standard of review would be applied? As stated in the PTOs Arthrex Questions and answers, at least for the interim process, the review will be de novo and the director will be able to consider any matter, including questions of fact and law.
  • How long will the review process take? 35 USC § 316 (a) requires that absent good cause “the final decision in an inter partes review be made no later than 1 year from the date” of the institution’s decision. It is not clear whether the director’s review is to be completed within one year of institution or whether § 316 (a) simply applies to the board’s final written decision. This lack of clarity stems in part from inconsistent terminology. That is, on the one hand, if the Director amends the FWD, it could be argued that it is the Director’s decision after his review that is the “final determination” of the law. On the other hand, the Board sometimes exercises its power to modify the FWD at the new hearing, but parties, commentators, the Board and the courts all seem to view the original FWD as the final decision of the law for purposes. respect of deadlines.
  • Will the complexity of a new process lead to a decrease in the number of granted IPR applications? Particularly because decisions on whether or not to institute IPRs are not subject to judicial review, a practical solution to deal with the potentially high number of requests for review addressed to the Director would be to institute fewer IPRs.

It is also unclear how the review process will affect appeals to the federal circuit. For example, unlike the situation with new Council hearings, would a losing party be required to request the Director’s review before appealing to the Federal Circuit (that is to say, to exhaust all administrative remedies before a judicial appeal)? A related issue is whether failure to raise an issue in a Director’s review application could drop that issue for appeal.

In addition, it should also be noted that the Director’s review process could change with each new Director. As the Court stressed the need for a “senior officer” appointed by the President and confirmed by the Senate to have this authority, it is likely that the manner in which each Director exercises this authority could, if not limited by the regulation of reviews and comments, vary widely.

That being said, the PTO has just released guidance for an “interim director review process” which is quite similar to the current POP review process. Under the interim process, a review of the Director “may be initiated ex officio by the Director or requested as a party to a PTAB proceeding”. The PTO guidelines explain that “

“Parties may request the Director to review a final written decision as part of an inter-party review or a post-grant review by (1) simultaneously entering a request for a rehearing by the Director in PTAB E2E and (2) by submitting notification of the request for a rehearing by the Director to the Bureau by email to [email protected], with email copy to counsel for all parties. “

Importantly, the power take-offs Arthrex The questions and answers explain that a request for a review by the Director “will be treated as a request for a new hearing under 37 CFR 90.3 (b) and will reset the time limit for appeal or civil action as set out in this rule” . However, as the Q&A further explains, this process “is envisioned as an interim procedure which may change based on public comment and the experience of conducting the Director’s reviews.”

Additionally, the Federal Circuit issued a brief order in the pending IPR appeals, where one of the parties raised a challenge to the appointment clause. This order specifies:

“(1) Within 14 days from the date of this Order, parties who have raised a challenge to the appointment clause shall file a brief, not exceeding 10 double-spaced pages, explaining how they feel their cases should proceed in the light of Arthrex. Responses from other parties, including the United States Patent and Trademark Office, subject to the same duration restrictions, are due within 14 days.

(2) All deadlines and procedures are suspended.

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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