The USPTO Issues Press Release Announcing Plans to Formalize the Director Review Process

On April 22, 2022, the USPTO issued a press release and announced that it is increasing transparency as it works to formalize the Director review process by way of providing updates on the current Director review webpage, as well as through a new webpage that provides the status of Director review requests. See our prior November 22, June 21, June 29, and July 21 posts on the topic of the interim Director review process.

On the new webpage, linked here, the following three cases are listed as proceedings in which Director review has been granted, either based on a party’s request or sua sponte.

 Apple, Inc. v. Personalized Media Communications, LLC, IPR2016-00754 & IPR2016-01520

• Decision subject to Director review request – Paper 41 (February 15, 2018)
• Order granting Director review – Paper 50 (March 3, 2022)

Ascend Performance Materials Operations, LLC v. Samsung SDI Co., Ltd., IPR2020-00349

• Decision subject to Director review request – Paper 53 (July 15, 2021)
• Order granting Director review – Paper 57 (November 1, 2021)
• Post-Director review Termination and Order – Paper 64 (March 3, 2022)

Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00733

• Decision subject to Director review request – Paper 80 (September 12, 2019)
• Order granting Director review – Paper 95 (November 18, 2021)

The Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal was quoted in the press release, stating, “In the coming weeks, we intend to issue a Request for Comment (RFC) on the Director review process and related processes the USPTO uses to promote innovation through consistent and transparent decision-making and the issuance and maintenance of strong patents.”  Director Vidal further stated that USPTO plans to “formalize these processes once we hear from a broad range of stakeholders.”

In addition to providing more details on the Director review process, Director Vidal encouraged parties “to provide a priority-ranked list of issues being raised.”  The press release listed the following seven issues that may warrant review by the Director:

• Issues that involve an intervening change in the law or USPTO procedures or guidance
• Material errors of fact or law in the Patent Trial and Appeal Board (PTAB) decision
• Matters that the PTAB misapprehended or overlooked
• Novel issues of law or policy
• Issues on which PTAB panel decisions are split
• Issues of particular importance to the Office or patent community
• Inconsistencies with Office procedures, guidance, or decisions

We will continue to monitor developments in this area and provide updates on our website.