PTAB Year in Review – Process and Procedures for Director Review of PTAB Decisions Codified in 2024

On October 1, 2024, the USPTO published a new final rule, Rules Governing Director Review of Patent Trial and Appeal Board Decisions.¹ The final rule codifies many aspects of the PTAB’s revised Interim Director Review process (effective July 24, 2023), and largely tracks the proposed rule that published on April 16, 2024.² The final rule became effective October 31, 2024.

The final rule adds a new rule—37 C.F.R. §  42.75—that addresses the following topics:

Scope of Director Review: Subsection (a) defines the scope of Director Review. Director Review is available for any institution decision or final decision in inter partes reviews (IPRs), post-grant reviews (PGRs), and derivation proceedings, as well as any decision granting rehearing of such a decision. This is consistent with prior practice under the revised interim Director Review process, and clarifies that derivation proceedings are within the scope of Director Review. The final rule also provides that Director Review is available for “any other decision concluding [an AIA] proceeding” (e.g., a grant of adverse judgment, or a dismissal of the proceeding).

Sua Sponte Director Review: Subsection (b) provides that the Director may sua sponte order Director Review. This is consistent with prior practice under the revised interim Director Review process. The new rule adds a deadline for initiating a sua sponte review “within 21 days after the expiration of the period for filing a request for rehearing” “absent exceptional circumstances.” The rule does not, however, include a specific deadline for the Office to issue any decision on Director Review.

Requests for Director Review: Subsection (c) details the timing and format of the request, which are generally consistent with prior practice under the revised interim Director Review process. A party may file one request for Director Review, as an alternative to requesting panel rehearing. The deadline is the same as the deadline for requesting rehearing (per § 42.71(d)), with extensions available for good cause. The request must follow all format requirements of §  42.6(a) and is limited to 15 pages (per § 42.24(a)(1)(v)). No new evidence is permitted, and there is no responsive briefing by the opposing party. The Director may authorize modifications to these length, response, and evidence limitations in a particular proceeding.

Process: Subsection (e) provides information on the Director Review process. When granting Director Review, the Director will issue an order or decision setting out the scope of review, and a review will conclude with an order or decision providing the Director’s reasons for disposition of the case. By default, a request for or initiation of Director Review does not stay any deadlines in the underlying proceeding. However, a request for or initiation of Director Review of an appealable Board decision does reset the time for appeal to the Federal Circuit, which then starts after all issues on Director Review are resolved. This is consistent with prior practice under the revised interim Director Review process. Of note, the rule does not include any specific deadline for the Office to issue any decision on Director Review.

Other Aspects: Subsections (d), (f), and (g) respectively address when an agency decision is considered “final” vis-à-vis a Director Review request, the Director’s authority to delegate their review, and the general prohibition against ex parte communications related to specific requests or proceedings.

Many specific details regarding practice and procedures are not expressly included in the final rule. Instead, these details are addressed on the USPTO’s Director Review web page,³ which also was updated for consistency with the updated rule on the October 31, 2024 effective date thereof. The Director Review web page includes, for example, the applicable standards of review, information about precedential designation, possible issues to address in a Director Review request, details of the decision-making process and the Advisory Committee, conflicts of interest, and step-by-step instructions on how to file and perfect a request.

As compared to the prior practice under the revised interim Director Review process, the process instructions in the new Director Review website no longer require a party requesting review to separately email the Director Review email address after filing their request in P-TACTS. Another change, effective January 19, 2025 as part of the Fiscal Year 2025 Fee Setting Rule Package, is a new fee of $452 for requesting Director Review.⁴

Notably, Director Review is only applicable to AIA trial proceedings. Director Review is not available for ex parte appeals (including appeals from reexamination or reissue applications). The Appeals Review Panel may be convened by the Director sua sponte to review PTAB ex parte appeals decisions, but parties may not request such review.⁵

The new rule regarding Director Review in AIA trial proceedings provides some certainty for parties as to the process, while still maintaining flexibility for the Director in reviewing and deciding Director Review requests.

[1] 89 Fed. Reg. 79,744.
[2] 89 Fed. Reg. 26,807.
[3] Available at: https://www.uspto.gov/patents/ptab/decisions/director-review-process
[4] 89 Fed. Reg. 91,898 (November 20, 2024), adding new rule 37 C.F.R. § 42.15(f).
[5] See www.uspto.gov/patents/ptab/appeals-review-panel.