In 2023, Director Kathi Vidal exercised her authority to conduct sua sponte director reviews of Patent Trial and Appeal Board (PTAB) decisions and addressed a wide range of issues that will impact PTAB practitioners. Many of these sua sponte director reviews related to inter partes review (IPR) institution decisions, which are generally not reviewed at the PTAB and, in nearly all circumstances, are not appealable. These sua sponte director reviews provide important guidance to practitioners on many issues of PTAB practice, including the application of Fintiv, the use of applicant-admitted prior art, and the Advanced Bionics standard.
Director review is a proceeding in which the director of the U.S. Patent and Trademark Office (USPTO) reviews an aspect of a PTAB decision before any appeal to the Federal Circuit. The U.S. Supreme Court held that the Director must have the discretion to review all administrative patent judge decisions in United States v. Arthrex, 141 S. Ct. 1970 (2021), and the USPTO’s director review process is the practical implementation of that holding. The director may review any PTAB decision at the request of a party or sua sponte.
