Final Rules Expand Director Review Reach
The USPTO has now issued a final rule package (here) to implement the Director Review process in AIA trial proceedings. The final rules follows the Notice of Proposed Rulemaking (NPRM) of April 16th and responsive public comments.
Based on the comments, the final rule proposal has been revised to expand Director Review to derivation proceedings, and will include other decisions in AIA proceedings outside of just institution decisions and Final Written Decisions (FWD) such as decisions to terminate.
The final rule provides that a party to an AIA proceeding may request Director Review of:
- Decision on institution
- Final decision (defined as a final written decision in an inter partes or post grant review proceeding or a final decision in a derivation proceeding)
- Decision granting rehearing of a decision on institution or a final decision
- Other decision concluding an AIA proceeding
The final rule further provides that the Director may initiate a review of such decisions sua sponte; sets forth the timing and format of a party’s request for Director Review; addresses the impact of Director Review on the underlying PTAB proceeding; clarifies the time by which an appeal to the U.S. Court of Appeals for the Federal Circuit must be filed; and provides that the Director may delegate a review.