“The Director may determine…that a decision does not present an issue that rises to a level requiring review by the Director but, nonetheless, warrants further consideration within the Board by an independent panel. Such a decision may be delegated to the DRP.” – USPTO Updated Guidance Implementing a Delegated Rehearing Panel
The United States Patent and Trademark Office (USPTO) today announced that it is retiring the Precedential Opinion Panel (POP) and extending the Director Review process to decisions on institution in America Invents Act (AIA) proceedings. The POP was established in 2018 under Director Andrei Iancu.
Earlier this year, Vidal said that guidance on replacing the POP was one of the issues she expected to announce in the first part of her second year in office. She had alluded to the idea in the past of establishing an “error correction panel” to replace the POP (though she later said the word “error” might not be the right term) and that such a panel would step in, for example, when there is intervening case law that changes practice but that the Director does not need to necessarily be involved with. “Where it’s not something I don’t need to weigh in on [through Director Review], I need to have a panel to delegate to,” Vidal said at the time.
In today’s announcement, the USPTO said there will now be a “Delegated Rehearing Panel (DRP),” which seems to fit this bill. According to the USPTO’s website, the DRP is a panel “to which the USPTO Director may delegate decisions of the [PTAB] in proceedings under the [AIA], including institution decisions and final written decisions, for further consideration, including those decisions in which a potential issue may have been misapprehended or overlooked by the Board.”
The DRP will be composed of three members of the Board and “shall be selected from the Chief Judge, Deputy Chief Judge, Vice Chief Judges, and Senior Lead Judges, excluding judges who served on the original Board panel for the case under review or otherwise have a conflict with the case.”
Those serving in an acting capacity as Chief Judge, Deputy Chief Judge, Vice Chief Judge, or Senior Lead Judge may serve on a DRP. Additionally, “any administrative patent judge who advises the Director on a particular case under consideration will not serve on the DRP panel for such a case.”
As to the criteria for delegation to a DRP, the DRP webpage explains that it is basically at the Director’s discretion:
“The Director is not limited as to which decisions may be delegated to the DRP for review. The Director may determine, for example, that a decision does not present an issue that rises to a level requiring review by the Director but, nonetheless, warrants further consideration within the Board by an independent panel. Such a decision may be delegated to the DRP.”
While the Director retains the authority to review any decision of the DRP sua sponte, “parties are not permitted to request further Director Review of a decision of the DRP or the Board on remand.”
The Director may also delegate Director Review requests to the DRP. An Advisory Committee will first provide a recommendation to the Director as to whether the case warrants Director Review, but even if the Committee recommends Director Review, the Director may choose to delegate to a DRP.
As to the extension of Director Review to institution decisions, the interim guidance notes that such requests “shall be limited to decisions presenting (a) an abuse of discretion or (b) important issues of law or policy. Both discretionary and merits-based issues may be raised, subject to limitations (a) and (b) above.”
Other updates announced today include:
- “Providing updated guidance as to what types of issues the Director will consider in DR, as well as additional guidance on various topics, such as the initiation of DR at the sole discretion of the Director (sua sponte DR), remands to PTAB for further proceedings, and sanction authority of the Director; and
- Creating a new Appeals Review Panel (ARP), which may be convened by the Director sua sponte, to review PTAB ex parte, reexamination, or reissue appeal decisions.”
In light of the changes, the POP is retired and Proppant Express Investments, LLC v. Oren Techs., LLC, Case No. IPR2018-00914, Paper 38, is de-designated.
“With these changes, we are enhancing and streamlining the Director Review and related processes, thereby making our procedures more efficient and effective for America’s innovators,” said USPTO Director Kathi Vidal. “Director Review has been an important way for parties to request another look at certain PTAB decisions with which they may disagree, and I’m excited to expand and refine that process based on feedback we received from our stakeholders.”
Today’s notice also said the Office will be engaging in a public notice and comment rulemaking process on the updates to allow for stakeholder input.
The Office also linked to a memorandum and an internal operating procedure (IOP) for ex parte appeals “that consolidate and describe current practices related to opinion writing and other internal procedures.”
Additional information on the updates can be found here: