The US Patent & Trademark Office (PTO) proposed new rules governing the process for Director review of Patent Trial & Appeal Board decisions in America Invents Act (AIA) proceedings. Rules Governing Director Review of Patent Trial and Appeal Board Decisions, 89 Fed. Reg. 26,807 (proposed Apr. 16, 2024) (to be codified at 37 C.F.R. pt. 42).

The Notice of Proposed Rulemaking (NPRM) proposes adding 37 C.F.R. § 42.75, which includes rules addressing the following issues:

Limited Availability of Director Review. The NPRM proposes that Director review in AIA proceedings would only be available to a party from institution decisions, final written decisions or panel decisions granting rehearing of a decision on institution or a final written decision. However, the Director would have authority to review any interlocutory decisions rendered in reaching such decisions. The NPRM also proposes that the Director may sua sponte review institution decisions, final written decisions or decisions granting rehearing.

Timing, Format and Content of Requests for Director Review. The NPRM proposes that requests for Director review would have to be sought within the time period set forth by 37 C.F.R. § 42.71(d), comply with the formatting and length requirements of 37 C.F.R. §§ 42.6(a) and 42.24(a)(1)(v), and would not be allowed to introduce new evidence. Any sua sponte Director review would have to be initiated within 21 days after the deadline to seek rehearing.

Effect of Director Review. The NPRM proposes that a decision on institution, a final written decision or a decision granting rehearing would become final agency action unless Director review was timely sought or timely initiated sua sponte or a request for Director review was denied.

Director Review Process. The NPRM proposes that Director review would not stay the underlying proceeding, but if the Director grants review, the review would conclude with the issuance of a decision or order that provides the reasons for the Director’s disposition of the case. A party would be permitted to appeal a Director review decision of either a final written decision or a decision granting rehearing of a final written decision (not institution decisions or decisions granting rehearing of institution decisions) to the Federal Circuit in accordance with the procedures set forth in 35 U.S.C. §§ 141(c) and 319. A request for Director review would be treated as a request for rehearing and would reset the time for appeal until Director review was resolved.

Delegation. The NPRM proposes that delegation of Director review would be permitted, subject to conditions set forth by the Director.

Communications With the PTO. The NPRM proposes that communications from a party concerning a specific Director review request or proceeding would have to copy counsel for all parties. Other than authorized amicus briefings, communications from third parties would not be allowed.

Comments are due by June 17, 2024, and can be submitted through the federal eRulemaking portal here.