Rules Governing Director Review of Patent Trial and Appeal Board Decisions, 79744-79752 [2024-22194]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 89, Number 190 (Tuesday, October 1, 2024)]
[Rules and Regulations]
[Pages 79744-79752]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-22194]


=======================================================================
-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 42

[Docket No. PTO-P-2024-0014]
RIN 0651-AD79


Rules Governing Director Review of Patent Trial and Appeal Board 
Decisions

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Final rule.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) is adding a new rule to govern the process for the review of 
Patent Trial and Appeal Board (PTAB or Board) decisions in Leahy-Smith 
America Invents Act (AIA) proceedings by the Under Secretary of 
Commerce for Intellectual Property and Director of the United States 
Patent and Trademark Office (Director). The new rule promotes the 
accuracy, consistency, and integrity of PTAB decision-making in AIA 
proceedings.

DATES: This rule is effective October 31, 2024.

FOR FURTHER INFORMATION CONTACT: Thomas Krause, Director Review 
Executive; Kalyan Deshpande, Vice Chief Administrative Patent Judge; or 
James Worth, Acting Senior Lead Administrative Patent Judge, at 571-
272-9797.

SUPPLEMENTARY INFORMATION:

Executive Summary

    Following the decision of the U.S. Supreme Court in United States 
v. Arthrex, Inc., 141 S. Ct. 1970, 1986 (2021) (``Arthrex''), on June 
29, 2021, the USPTO implemented an interim process for Director Review 
of final written decisions in AIA proceedings. To promote the accuracy, 
consistency, and integrity of PTAB decision-making in AIA proceedings, 
the USPTO then issued an updated ``Interim Process for Director 
Review'' on April 22, 2022. The updated interim process set forth 
guidance for parties who wished to request Director Review. This 
guidance increased clarity as the Office continued to update and 
improve the process based on experience and initial stakeholder 
feedback. The USPTO subsequently issued a Request for Comments (RFC) 
seeking public input on Director Review. 87 FR 43249-52 (July 20, 
2022); 87 FR 58330 (Sept. 26, 2022) (extending comment period). Based 
on experience and in light of stakeholder feedback received in response 
to the RFC, on July 24, 2023, the USPTO modified the interim Director 
Review process to allow parties to request Director Review of decisions 
on institution in AIA proceedings. The USPTO then issued a Notice of 
Proposed Rulemaking (NPRM) on April 16, 2024, taking into consideration 
the feedback received in response to the RFC. Following the proposed 
rule and solicitation of public comments, 89 FR 26807 (Apr. 16, 2024), 
this final rule implements, in regulation, key aspects of the processes 
used for Director Review.
    This final rule provides that a party to an AIA proceeding may 
request Director Review in that proceeding of any: (1) decision on 
institution, (2) final decision,\1\ (3) decision granting rehearing of 
a decision on institution or a final decision, or (4) other decision 
concluding an AIA proceeding. In addition, the final rule provides that 
the Director may sua sponte (on their own initiative) initiate a review 
of such decisions. The final rule also sets forth the timing and format 
of a party's request for Director Review. The final rule addresses the 
impact of Director Review on the underlying proceeding at the PTAB, as 
well as the time by which an appeal to the U.S. Court of Appeals for 
the Federal Circuit must be filed. The final rule also provides that 
the Director may delegate a review.
---------------------------------------------------------------------------

    \1\ As discussed below, as used in the final rule, ``final 
decision'' is defined as both final written decisions under 35 
U.S.C. 318, 328, for inter partes review and post grant review 
proceedings, and also final decisions under 35 U.S.C. 135, for 
derivation proceedings.
---------------------------------------------------------------------------

Background

    On September 16, 2011, Congress enacted the AIA (Pub. L. 112-29, 
125 Stat. 284 (2011)). The AIA established the PTAB,\2\ which is made 
up of administrative patent judges (APJs) and four statutory members, 
namely the Director, the Deputy Director, the Commissioner for Patents, 
and the Commissioner for Trademarks. 35 U.S.C. 6(a). The Director is 
appointed by the President, by and with the advice and consent of the 
Senate. 35 U.S.C. 3(a)(1). APJs are appointed by the Secretary of 
Commerce in consultation with the Director. Id. section 6(a). The PTAB 
hears and decides ex parte appeals of adverse decisions by examiners in 
applications for patents, applications for reissue, and reexamination 
proceedings, and

[[Page 79745]]

conducts proceedings under the AIA, including inter partes reviews 
(IPRs), post grant reviews (PGRs), and derivation proceedings, all in 
panels of at least three members. Id. sections 6(b), (c). Under the 
statute, the Director designates the members of each panel. Id. section 
6(c). The Director has delegated that authority to the Chief Judge of 
the PTAB. See PTAB Standard Operating Procedure 1 (Rev. 16) (SOP 1), 
Assignment of Judges to Panels, available at www.uspto.gov/sites/default/files/documents/sop1_r16_final.pdf.
---------------------------------------------------------------------------

    \2\ The PTAB was previously known as the Board of Patent Appeals 
and Interferences.
---------------------------------------------------------------------------

    35 U.S.C. 6(c) states that ``[o]nly the Patent Trial and Appeal 
Board may grant rehearings'' of Board decisions. In Arthrex, the 
Supreme Court held that the Appointments Clause of the Constitution 
(art. II, sec. 2, cl. 2) and the supervisory structure of the USPTO 
require the Director, a principal officer of the United States, to have 
the ability to review the PTAB's final written decisions in IPR 
proceedings. See Arthrex, 141 S. Ct. at 1986. The Court determined that 
``35 U.S.C. 6(c) is unenforceable as applied to the Director insofar as 
it prevents the Director from reviewing the decisions of the PTAB on 
[the Director's] own.'' Id. at 1987. The Court added that:

this suit concerns only the Director's ability to supervise APJs in 
adjudicating petitions for inter partes review. We do not address 
the Director's supervision over other types of adjudications 
conducted by the PTAB, such as the examination process for which the 
Director has claimed unilateral authority to issue a patent.

    Id. The Court thus held that ``the Director has the authority to 
provide for a means of reviewing PTAB decisions'' in IPR proceedings 
and ``may review final PTAB decisions and, upon review, may issue 
decisions . . . on behalf of the Board.'' Id. Additionally, the Court 
in Arthrex made clear that ``the Director need not review every 
decision of the PTAB,'' nor did it require the Director to accept 
requests for review or issue a decision in every case. Id. at 1988. 
Instead, ``[w]hat matters is that the Director have the discretion to 
review decisions rendered by APJs.'' Id.; see Arthrex, Inc. v. Smith & 
Nephew, Inc., 35 F.4th 1328, 1338 (Fed. Cir. 2022) (noting same); CyWee 
Grp. Ltd. v. Google LLC, 59 F.4th 1263, 1268 (Fed. Cir. 2023) (``[T]he 
Appointments Clause was intended to prevent unappointed officials from 
wielding too much authority, not to guarantee procedural rights to 
litigants, such as the right to seek rehearing from the Director.'' 
(quoting Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 
1363, 1374 (Fed. Cir. 2021)).
    Following the Arthrex decision, on June 29, 2021, the USPTO 
implemented an interim process for Director Review of final written 
decisions in IPR or PGR proceedings and published Arthrex Questions and 
Answers (Q&As), available on a USPTO web page.\3\ On April 22, 2022, 
the USPTO published two web pages to replace the Arthrex Q&As. 
Specifically, the USPTO published an ``Interim Process for Director 
Review'' web page,\4\ setting forth more details on the interim process 
and additional suggestions and guidance for parties who wish to request 
Director Review. The updated interim process guidance increased clarity 
as the Office continued to update and improve the interim Director 
Review process based on experience and initial stakeholder feedback. 
The USPTO also published a web page providing the status of all 
Director Review requests, available at www.uspto.gov/patents/patent-trial-and-appeal-board/status-director-review-requests (status web 
page). The Director Review status web page includes a spreadsheet that 
is updated monthly and presents additional information about the 
proceedings in which Director Review has been granted.
---------------------------------------------------------------------------

    \3\ This web page was superseded by the ``Revised Interim 
Director Review Process'' web page, discussed below, but remains 
available at www.uspto.gov/patents/patent-trial-and-appeal-board/procedures/arthrex-qas.
    \4\ This web page was also superseded by the ``Revised Interim 
Director Review Process'' web page.
---------------------------------------------------------------------------

    On July 20, 2022, the USPTO issued an RFC \5\ on Director Review, 
Precedential Opinion Panel (POP) review,\6\ and the internal 
circulation and review of PTAB decisions. 87 FR 43249-52.\7\ Based on 
experience and in light of stakeholder feedback received in response to 
the RFC, on July 24, 2023, the USPTO modified the interim Director 
Review process to allow parties to request Director Review of decisions 
on institution in AIA proceedings, and to introduce a process by which 
the Director may delegate review of a Board decision to a Delegated 
Rehearing Panel (DRP). See ``Revised Interim Director Review Process'' 
web page (available at www.uspto.gov/patents/ptab/decisions/revised-interim-director-review-process) (Director Review web page); \8\ 
``Delegated Rehearing Panel'' web page (available at www.uspto.gov/patents/ptab/decisions/delegated-rehearing-panel). The USPTO made 
additional updates to the interim Director Review process on September 
18, 2023, (updating processes related to Director Review of PTAB 
decisions on remand from the Director), January 19, 2024, (updating 
processes related to requests for rehearing of Director Review 
decisions), and April 16, 2024, (providing step-by-step instructions on 
how to file a request for Director Review).
---------------------------------------------------------------------------

    \5\ Request for Comments on Director Review, Precedential 
Opinion Panel Review, and Internal Circulation and Review of Patent 
Trial and Appeal Board Decisions. 87 FR 43249-52 (July 20, 2022).
    \6\ The USPTO established the POP review process in 2018 and set 
forth that process in the Board's Standard Operating Procedure 2, 
revision 10. The POP process was used to establish binding agency 
authority concerning major policy or procedural issues, or other 
issues of exceptional importance in the limited situations where it 
was appropriate to create such binding agency authority through 
adjudication before the PTAB. The USPTO retired the POP process on 
July 24, 2023, in view of the interim Director Review process.
    \7\ Available at www.federalregister.gov/documents/2022/07/20/2022-15475/request-for-comments-on-director-review-precedential-opinion-panel-review-and-internal-circulation.
    \8\ As used herein, the term ``Director Review web page'' 
encompasses both the Revised Interim Director Review Process web 
page and the new Director Review web page. The Revised Interim 
Director Review Process web page remains in effect until the 
effective date of this rule, after which the new Director Review web 
page will publish and become effective.
---------------------------------------------------------------------------

Request for Comments

    As noted above, on July 20, 2022, the Office published an RFC on 
Director Review, POP review, and the internal circulation and review of 
PTAB decisions. 87 FR 43249-52. The USPTO received 4,377 comments from 
intellectual property organizations, trade organizations, other 
organizations, and individuals, on all aspects of the RFC, including 
twelve specific responses to questions 2-12 related to Director Review 
or POP review. All comments are publicly available at the Federal 
eRulemaking Portal at www.regulations.gov/docket/PTO-P-2022-0023/comments. A summary of the pertinent comments is available in the NPRM 
at www.regulations.gov/document/PTO-P-2024-0014-0001. 89 FR 26807 (Apr. 
16, 2024).

Proposed Rule: Comments and Responses

    On April 16, 2024, after careful consideration of the public input 
received in response to the RFC, the USPTO published a notice of 
proposed rulemaking to set forth key aspects of the processes used for 
Director Review. See 89 FR 26807. The notice of proposed rulemaking 
provided for a 60-day comment period.
    The Office received a total of 12 comments from eleven 
organizations and one individual. The Office appreciates the thoughtful 
comments representing views from various public stakeholder 
communities. The

[[Page 79746]]

comments are publicly available at the Federal eRulemaking Portal at 
www.regulations.gov/document/PTO-P-2024-0014-0001.
    Commenters were generally supportive of the proposed rule and 
agreed that the rule would promote the accuracy, consistency, and 
integrity of PTAB decision-making in AIA proceedings. Some commenters 
suggested expanding the scope of Director Review, for example, to 
include decisions on ex parte appeals and reexamination appeals. A 
summary of the comments and the Office's responses are provided below. 
The Office's responses address the comments that are directed to the 
proposals set forth in the NPRM. Any comments directed to topics beyond 
the scope of the NPRM are not addressed.
    Comment 1: Four commenters suggested adding formal standards of 
review to the rule, with various standards proposed. Two commenters 
recommended expressly incorporating the standards of review currently 
set forth in the interim Director Review process. A third commenter 
recommended a de novo standard of review for any questions of law and a 
more deferential standard of clear error for questions of fact with 
respect to final written decisions. The same commenter also recommended 
applying a deferential standard, such as abuse of discretion, for 
review of decisions granting institution. A fourth commenter 
recommended the rule specify de novo review for all Director Review 
decisions.
    Response: The Office appreciates these thoughtful comments, but 
does not adopt the suggestions at this time. The Supreme Court's 
Arthrex decision necessitates that the Director be able to review 
decisions in AIA proceedings but Arthrex does not limit or prescribe 
the manner or standard by which the Director conducts that review. 
Moreover, the comments identify different standards of review and do 
not identify a single consensus approach. The rule provides the 
Director with flexibility as to the standards of review to be applied 
in the Director Review process. The Office will continue to provide 
guidance on any applicable standard through the Director Review web 
page consistent with the final rule.
    Comment 2: One commenter suggested adding a provision to the rule 
to state that Director Review decisions will be made precedential only 
when the Director determines that there is a compelling need to set 
binding policy. Another commenter likewise expressed support for a rule 
that Director Review decisions are not precedential by default.
    Response: The Office appreciates the comments, but does not adopt 
the suggestion to include a provision in the rule related to the 
designation of Director Review decisions. Currently, Director Review 
decisions are, by default, routine decisions as set forth in Standard 
Operating Procedure 2, and are designated precedential only at the 
Director's determination. See PTAB Standard Operating Procedure 2 (Rev. 
11) (SOP 2), Designation or De-designation of Decisions as Precedential 
or Informative, available at www.uspto.gov/sites/default/files/documents/20230724_ptab_sop2_rev11_.pdf; see also Revised Interim 
Director Review Process web page section 5.B. To date, the Office has 
designated only seven Director Review decisions as precedential. The 
rule provides the Director with flexibility as to designation of 
Director Review decisions.
    Comment 3: One commenter suggested adding a provision to the rule 
requiring that a request for Director Review set forth the reason(s) 
why the requester believes the decision for which review is sought 
presents an: (a) abuse of discretion, (b) important issue of law or 
policy, (c) erroneous finding of material fact, and/or (d) erroneous 
conclusion of law. The commenter suggested that the requester be 
required to highlight issues of exceptional importance, conflicts 
between Board decisions, or issues relating to application of law to 
matters before the Board.
    Response: The Office appreciates the comment, but does not adopt 
the suggestion. Although issue identification by a requester is helpful 
and encouraged, especially where a Director Review request presents 
multiple issues, the Office does not find it necessary to impose such a 
requirement by rule. Implementation details relating to the manner of 
filing a request for Director Review, including possible issues to 
address in a Director Review request, are provided on the Director 
Review web page and will continue to be reflected on a new Director 
Review web page consistent with the final rule.
    Comment 4: One commenter recommended limiting sua sponte Director 
Review to issues of exceptional importance, resolving conflicts between 
Board decisions, and/or matters of certainty and consistency in the 
application of law to matters before the Board.
    Response: The Office appreciates the comment, but declines to limit 
the Director's ability to grant sua sponte review by rule. Consistent 
with Arthrex, the rule provides the Director with flexibility in 
initiating sua sponte review. The Office will continue to provide 
guidance on any applicable standard for sua sponte review through the 
Director Review web page consistent with the final rule.
    Comment 5: One commenter recommended adding a provision to the rule 
to explain that the phrase ``any interlocutory decision rendered by the 
Board in reaching that decision,'' in Sec.  42.75(a), shall be 
construed broadly to include any interlocutory decision that plausibly 
affected the outcome of the proceeding before the Board. The commenter 
suggested that such actions must be open to Director Review and that 
the Director must have broad discretion to review interlocutory 
decisions from the Board.
    Response: The Office appreciates the comment, but does not adopt 
the recommendation. Consistent with the comment, the final rule 
expressly states that the Director may review ``any interlocutory 
decision rendered by the Board'' in reaching a decision for which 
Director Review may be requested or initiated. Further clarification of 
the phrase, or its broad language ``any,'' is unnecessary.
    Comment 6: Several commenters suggested revising the rule to allow 
parties to request Director Review of proceedings other than inter 
partes review and post grant review including, e.g., derivations and 
appeals from ex parte examination, ex parte reexaminations, and reissue 
applications, potentially with different pages limits for these 
requests. Two commenters identified public policy benefits associated 
with expansion of Director Review, in part because the Director is a 
principal officer of the United States. One commenter promoted merging 
the Appeals Review Panel \9\ and Director Review procedures. Another 
commenter suggested that the Supreme Court's Arthrex decision requires 
Director Review of ex parte PTAB decisions, and cited to the Supreme 
Court's remand of In re Boloro Glob. Ltd., 963 F.3d 1380 (Fed. Cir. 
2020), In re Bottomline Techs. (de), Inc., No. 2020-1161 (Fed. Cir. 
Aug. 4, 2020), and others, in support.
---------------------------------------------------------------------------

    \9\ The Appeals Review Panel may be convened by the Director sua 
sponte to review PTAB decisions in ex parte appeals, re-examination 
appeals, and reissue appeals. See www.uspto.gov/patents/ptab/appeals-review-panel.
---------------------------------------------------------------------------

    Response: The Office appreciates these comments regarding the types 
of proceedings for which Director Review may be requested and the 
Office adopts

[[Page 79747]]

these suggestions in part at this time. The Supreme Court's decision in 
Arthrex concerned AIA trial proceedings. 141 S. Ct. 1970, 1987. This 
rule is promulgated under Chapter 42, directed to trial practice before 
the Board. Consistent with current practice, the rule permits Director 
Review of derivation proceedings. The rule has been amended to 
expressly reference the derivation statute. Additionally, consistent 
with these comments regarding expansion, the Office has further amended 
the rule to expressly indicate that Director Review is available for 
any other decision concluding an AIA proceeding such as, for example, a 
decision terminating the proceeding, e.g., due to a grant of adverse 
judgment, or a dismissal of the proceeding. This expansion is 
consistent with the reasoning of Arthrex, which requires the Director 
to be able to review final decisions of the Board in AIA proceedings. 
The Office does not adopt the suggestion to expand Director Review to 
include review of PTAB decisions in appeals of ex parte examination 
(including appeals from reexamination or reissue applications) or 
reexamination at this time.
    Comment 7: One commenter suggested that the Director entirely 
delegate the Director Review function to a delegatee office, similar to 
how petitions to the Director are handled during the patent examination 
process. The commenter expressed concern that involvement by the 
Director in disputes between private parties overly politicizes 
patents, causes a loss of confidence in the patent system, and takes up 
too much of the Director's time. The commenter suggested that the 
Director should rarely, if ever, intervene in individual cases. The 
commenter recommended that review by the Director be reserved for rare 
cases where perceived defects could not be adequately corrected by the 
delegatee office.
    Response: The Office appreciates the comment, but does not adopt 
the suggestion at this time. The rule allows the Director to delegate 
review at the Director's discretion. In order to provide the Director a 
flexible approach to delegation, the Office declines to require 
delegation of all cases, or to a specific delegatee Office.
    Comment 8: One commenter suggested limiting requests for Director 
Review to only final written decisions to avoid straining Office and 
party resources. Another commenter suggested limiting requests for 
Director Review of decisions under 35 U.S.C. 314 or 324 to only denials 
of institution to prevent disruption of the AIA trial process, when 
trial has been instituted, and to provide an option for review in cases 
where appeal is not available.
    Response: The Office appreciates these thoughtful comments 
regarding the available scope of Director Review; however, these 
suggestions are not adopted. The Office modified the interim Director 
Review process to allow parties to request Director Review of all 
decisions on institution under 35 U.S.C. 135, 314, or 324 in AIA 
proceedings on July 24, 2023. Since then, as of August 1, 2024, the 
Office has received requests for Director Review of 49 final written 
decisions and 115 decisions on institution. Of the 115 requests for 
decisions on institution, 74 requests were directed to denials of 
institution and 41 requests were directed to grants of institution. The 
Office's experience with the interim Director Review process indicates 
that the Office is not strained or overburdened by permitting parties 
to request Director Review of institution decisions. Even with the 
addition of requests for Director Review of institution decisions, the 
Director has continued to issue decisions as to whether to grant or 
deny the request for Director Review, on average, in less than two 
months.
    Further, the Office declines to limit requests for Director Review 
of institution decisions to denials of institution. Providing both 
parties the opportunity to request Director Review following an 
institution decision best aligns with the Office's priority to promote 
the accuracy, consistency, and integrity of PTAB decision-making in AIA 
proceedings.
    Comment 9: Two commenters suggested adding various time limits for 
Director Review. One commenter recommended adding a 30-day deadline 
within which the Director shall issue a decision granting, denying, or 
delegating a party's request for Director Review. The same commenter 
also recommended establishing a three-month deadline from the date of 
the Director Review request for completion of Director Review but 
allowing exceptions upon a showing of good cause. A second commenter 
also recommended adding a deadline by which Director Review must 
conclude, but did not propose a specific time limit. The same commenter 
suggested that a rule setting forth a time limit would provide parties 
with timing certainty, e.g., for purposes of an appeal or to lift a 
stay in a parallel proceeding.
    Response: The Office appreciates these comments, but does not adopt 
the suggestions at this time. The rule allows parties to request 
Director Review from the Board's decision on institution, final 
decision, grant of rehearing of such a decision, or other decision 
concluding an AIA proceeding. Given the breadth of issues that may be 
presented for Director Review, a uniform time limit for Director 
Review, whether for determinations to grant Director Review or for the 
issuance of Director Review decisions, would not be appropriate. 
Although some requests for Director Review can be disposed of within a 
predictable timeframe, others require more time, as dictated by the 
facts of the proceeding. The rule, therefore, provides the Director 
with necessary flexibility to carefully review and decide Director 
Review requests. The Office notes that the rule provides a time frame 
in which the Director will typically initiate sua sponte Director 
Review, providing the parties guidance regarding whether the Director 
will review a Board decision absent a request. The Office further notes 
that since it expanded the interim Director Review process to permit 
requests from institution decisions, the Director has issued decisions 
as to whether to grant or deny the request for Director Review, on 
average, in less than two months. The Office will continue to provide 
status updates as to pending requests for Director Review on the 
Director Review status web page.
    Comment 10: One commenter suggested amending the rule to require 
that the Director remand a decision denying institution of a PGR to a 
different panel if the Director identifies an abuse of discretion, 
failure to address an issue, or an erroneous finding of fact or law.
    Response: The Office appreciates the thoughtful comment but does 
not adopt this suggestion. The final rule sets forth the Director 
Review process, but does not address paneling or repaneling procedures 
at the Board. Thus, the suggested procedure for repaneling cases is 
outside the scope of the rule. Further, the Director's involvement in 
the paneling or repaneling of any specific proceeding before the PTAB 
prior to issuance of a decision is controlled by PTAB SOP 1 and 37 CFR 
43.3(d). In particular, the Director's authority under 35 U.S.C. 6(c) 
has been delegated to the PTAB Chief Judge and the Director is not 
involved in directing or otherwise influencing the paneling or 
repaneling of any specific proceeding before the PTAB prior to issuance 
of the panel decision. See SOP 1, 37 CFR 43.3(d).
    Comment 11: One commenter requested that the Office provide a 
mechanism for parties seeking a good

[[Page 79748]]

cause extension of time under Sec.  42.75(c)(1).
    Response: The Office appreciates the suggestion but declines to 
implement it in the rule. The rule allows for an extension of time upon 
a showing of good cause and, consistent with Board practice, the burden 
is on the requesting party to provide good cause as to why the 
extension should be granted. Cf. 37 CFR 42.20(c) (``The moving party 
has the burden of proof to establish that it is entitled to the 
requested relief.''). Also consistent with Board practice, any request 
for an extension of time must be made sufficiently in advance of the 
due date for submitting a Director Review request.
    Comment 12: One commenter suggested amending the rule to permit 
amicus briefing whenever the Director grants a request with respect to 
an important issue of law or policy. Another commenter suggested 
adopting a policy to presumptively allow the filing of amicus briefs in 
Director Review cases. These commenters suggest that routinely allowing 
amicus briefs will ensure that any member of the public with an 
interest in an issue can provide input. In the commenters' view, 
members of the public may be in a better position to perceive potential 
impacts and policy implications raised by a request.
    Response: The Office appreciates these thoughtful comments, but the 
suggestions are not adopted. Although the Office agrees that amicus 
briefs may provide helpful input on important issues of law and policy, 
Director Review decisions are generally based on the existing record of 
a proceeding and typically do not need amicus briefing. The Director 
retains the authority to request amicus briefing, where deemed 
appropriate, and has requested such briefing in certain cases. 
Permitting amicus briefing in all cases may introduce unnecessary 
delays in the Director Review process.
    Comment 13: One commenter suggested increasing transparency in the 
Director Review process. The commenter specifically suggested that the 
Office provide additional detail regarding the Director's authority to 
delegate review under proposed Sec.  42.75(f), the Director's decision-
making process, and the identity of members of the Director's Advisory 
Committee.
    Response: The Office appreciates the thoughtful comment but does 
not adopt this suggestion. The Director Review web page provides 
details about the Director's delegation of review, the decision-making 
process, and the Advisory Committee. For example, as discussed on the 
Director Review web page, the Director makes all Director Review 
decisions, unless the Director delegates review. When delegating 
review, the Director will expressly identify the delegated decision-
maker(s). The Director may be assisted by an Advisory Committee during 
the Director Review process. The Director Review web page describes, in 
detail, the role of the Advisory Committee and its composition. The 
Advisory Committee typically comprises members from various business 
units of the USPTO, including: Office of the Under Secretary (not 
including the Director or Deputy Director), Patent Trial and Appeal 
Board (not including members of the panel for each case under review), 
Office of the Commissioner for Patents (not including the Commissioner 
for Patents or any persons involved in the examination of the 
challenged patent), Office of the General Counsel (which includes the 
Office of the Solicitor), and Office of Policy and International 
Affairs. The Advisory Committee evaluates requests for Director Review 
and provides a single recommendation to the Director that includes a 
consensus recommendation from various business units of the Office, or 
notes differing views among the Advisory Committee members.

Changes From the Proposed Rule

    Upon careful consideration of the public comments, the Office 
adopts the provisions in the proposed rule with a few minor changes in 
the rule language, as discussed below.
    In this final rule, the Office modifies Sec.  42.75(a), (d), and 
(e) to expressly provide for Director Review of derivation proceedings 
under 35 U.S.C. 135. Such review is consistent with the interim process 
and the NPRM, although the specific statutory subsection was not 
identified in the rule language. Similarly, in the final rule, the 
Office modifies Sec.  42.75(a) to expressly defines ``final decision'' 
as including both final written decisions under 35 U.S.C. 318, 328, and 
also final decisions under 35 U.S.C. 135.
    The Office also modifies Sec.  42.75(a), (d), and (e) to expressly 
provide for Director Review of any other decision concluding a 
proceeding brought under 35 U.S.C. 135, 311, or 321, consistent with 
the Supreme Court's holding in Arthrex. See Arthrex, 141 S. Ct. at 1987 
(``The Director accordingly may review final PTAB decisions and, upon 
review, may issue decisions [themselves] on behalf of the Board.''). 
For example, the Director may elect to review a Board decision that 
dismisses an AIA proceeding or terminates an AIA proceeding, e.g., 
through the grant of adverse judgment.
    Finally, the Office modifies Sec.  42.75(d) to provide that an 
underlying Board decision does not become final if there is an 
extension of time for a party to file a request for Director Review, in 
order to conform to the language of paragraph (d) with the language of 
paragraph (c)(1).

Discussion of Specific Rules

    This final rule amends part 42 to set forth regulations governing 
the procedures for Director Review of decisions in AIA proceedings. The 
USPTO issues this final rule to promote the accuracy, consistency, and 
integrity of PTAB decision-making in AIA proceedings.
    The USPTO adds Sec.  42.75(a) to set forth the general availability 
of Director Review for any decision on institution under 35 U.S.C. 135, 
314, or 324, any final decision under 35 U.S.C. 135, 318 or 328, any 
decision granting rehearing of such a decision, or any other decision 
concluding a proceeding brought under 35 U.S.C. 135, 311, or 321; and 
to expressly define ``final decision.''
    The USPTO adds Sec.  42.75(b) to set forth sua sponte Director 
Review.
    The USPTO adds Sec.  42.75(c) to set forth party requests for 
Director Review and the requirements of such requests.
    The USPTO adds Sec.  42.75(d) to specify the finality of decisions 
subject to Director Review.
    The USPTO adds Sec.  42.75(e) to specify the process for Director 
Review and the availability for appeal of a Director Review decision of 
certain Board decisions.
    The USPTO adds Sec.  42.75(f) to permit delegation of a review by 
the Director.
    The USPTO adds Sec.  42.75(g) to specify provisions regarding 
communications with the Office.

Final Rules and Interim Director Review Process

    Under the Director Review process set forth in this final rule, a 
party may only request Director Review of: (1) a decision on whether to 
institute an AIA trial, (2) a final decision in an AIA proceeding, (3) 
a panel decision granting a request for rehearing of a decision on 
whether to institute a trial or a final decision in an AIA proceeding, 
or (4) any other decision concluding an AIA proceeding, for example, a 
termination due to a grant of adverse judgment under 37 CFR 42.73(b). 
In accordance with this final rule, the Director may also grant review 
of those same decisions sua sponte.

[[Page 79749]]

    The Director Review web page further explains that parties must 
file their request for Director Review in the Patent Trial and Appeal 
Case Tracking System and must also send an email to the Director at 
[email protected]. As described on the Director 
Review web page, third parties may not request Director Review or 
communicate with the USPTO concerning the Director Review of a 
particular case unless the Director invites them to do so.
    As set forth in this final rule, in the course of reviewing such a 
decision on Director Review, the Director may review any interlocutory 
decision rendered by the Board in reaching that decision.
    Moreover, under this final rule, parties are limited to requesting 
either: (1) Director Review or (2) rehearing by the original panel, but 
may not request both. As described on the Director Review web page, 
requests for both Director Review and panel rehearing of the same 
decision are treated as a request for Director Review only. However, as 
set forth in this final rule, parties may request Director Review of a 
decision by a panel granting rehearing of a prior PTAB decision on 
institution or final decision. ``[G]ranting rehearing'' here means that 
the rehearing decision modifies the holding or result of the underlying 
decision in some fashion. For example, where a Board panel changes the 
determination of a final written decision for certain claims from 
unpatentable to not unpatentable in a rehearing decision, the 
petitioner may file a Request for Director Review of that new 
determination as to those claims. As another example, rehearing is not 
``granted'' if the panel: (1) provides a decision addressing the 
arguments in the request for rehearing but does not modify the 
underlying holding or result, or (2) denies the request for rehearing 
without further explanation. In this situation, Director Review of the 
rehearing decision is not available.
    As set forth on the Director Review web page, each request for 
Director Review is considered by an Advisory Committee that assists the 
Director. The Advisory Committee has at least 11 members and includes 
representatives from various business units within the USPTO who serve 
at the discretion of the Director. The Advisory Committee currently is 
chaired by a Director Review Executive and comprises members from the 
Office of the Under Secretary (not including the Director or Deputy 
Director); the Patent Trial and Appeal Board (not including members of 
the original panel for each case under review); the Office of the 
Commissioner for Patents (not including the Commissioner for Patents or 
any persons involved in the examination of the challenged patent); the 
Office of the General Counsel (which includes the Office of the 
Solicitor); and the Office of Policy and International Affairs. The 
Advisory Committee meets periodically to evaluate each request for 
Director Review.\10\ Advisory Committee meetings may proceed with fewer 
than all members in attendance, as long as a quorum of seven members is 
present. The Advisory Committee presents the Director with a 
recommendation. The recommendation includes either a consensus from the 
various members of the Advisory Committee, or notes differing views 
among the Advisory Committee members.
---------------------------------------------------------------------------

    \10\ No member of the Advisory Committee may participate in the 
consideration of a request for Director Review if that member has a 
conflict of interest under the U.S. Department of Commerce USPTO 
Summary of Ethics Rules, available at www.uspto.gov/sites/default/files/documents/USPTO-Summary_of_Ethics_Rules-2022.pdf. PTAB APJs 
who are Advisory Committee members will also follow the guidance on 
conflicts of interest set forth in the PTAB SOP 1, and will recuse 
themselves from any discussion involving cases on which they are 
paneled.
---------------------------------------------------------------------------

    The Director also receives each Director Review request, the 
underlying decision, and associated arguments and evidence. The 
Director determines whether to grant or deny the request for Director 
Review, or to delegate the review of a Board decision. The Director may 
also consult others in the USPTO as needed, so long as those 
individuals consulted do not have a conflict of interest. Although the 
Advisory Committee and other individuals in the USPTO may advise the 
Director on whether a decision warrants review, the Director has sole 
discretion to resolve each request for Director Review. The Director's 
decision on each request will be communicated to the parties in the 
proceeding. Furthermore, Director Review grants and delegations will be 
posted on the Director Review status web page. Other determinations, 
such as Director Review denials, dismissals, and withdrawals, will be 
cataloged and posted on the Director Review status web page 
spreadsheet.
    Pursuant to this final rule, in addition to allowing parties to 
request Director Review of certain decisions, the Director may order 
sua sponte Director Review. Sua sponte Director Review is typically 
reserved for issues of exceptional importance, and the Director retains 
the authority to initiate review sua sponte of any issue in the 
proceeding, as the Director deems appropriate. As explained in SOP 4, 
an internal post-issuance review team at the PTAB reviews issued 
decisions and, if warranted, flags certain AIA decisions as potential 
candidates for sua sponte Director Review. See PTAB SOP 4,\11\ at 1, 5. 
In addition, and as described on the Director Review web page, the 
Director may also convene the Advisory Committee to make 
recommendations on decisions that the Director is considering for sua 
sponte Director Review. If the Director initiates a sua sponte review, 
the parties will be given notice and may be given an opportunity for 
briefing. The public will also be notified, and the Director may 
request amicus briefing. If briefing is requested, the procedures to be 
followed will be set forth.
---------------------------------------------------------------------------

    \11\ Available at www.uspto.gov/sites/default/files/documents/ptab_sop_4-2023-oct.pdf.
---------------------------------------------------------------------------

    The final rule sets forth that absent exceptional circumstances 
(which might include a remand from the Federal Circuit for the purpose 
of Director Review), the Director may initiate sua sponte review at any 
point within 21 days after the expiration of the period for filing a 
request for rehearing, pursuant to Sec.  42.71(d), as appropriate to 
the type of decision (i.e., a decision on institution or a final 
written decision) for which review is sought.
    The final rule also sets forth that a decision on institution, a 
final decision, a decision granting rehearing of such decision on 
institution of a final decision, or any other decision concluding an 
AIA proceeding shall become the decision of the agency unless Director 
Review is requested or sua sponte review is initiated. Moreover, upon 
denial of a request for Director Review of such a decision, the Board's 
decision becomes the final agency decision.
    The final rule sets forth that, by default, a request for Director 
Review or the initiation of sua sponte Director Review resets the time 
for appeal until all issues on Director Review are resolved. A request 
for Director Review or the initiation of sua sponte Director Review 
does not stay or delay the time for the parties to take action in the 
underlying proceeding before the PTAB, unless the Director orders 
otherwise. The final rule sets forth that if the Director grants a 
Director Review, the Director will issue an order or decision that will 
be made part of the public record, subject to any confidentiality 
requirements. A grant of Director Review that is not withdrawn will 
conclude with the issuance of a decision or order providing the 
Director's reasoning in the case.
    The final rule sets forth that a party may appeal a Director Review 
decision

[[Page 79750]]

of a final decision, rehearing thereof, or other appealable decision 
concluding an AIA proceeding, to the United States Court of Appeals for 
the Federal Circuit using the same procedures for appealing other PTAB 
decisions under 35 U.S.C. 141(c), 141(d), 319. Director Review 
decisions on decisions on institution are not appealable.
    The final rule set forth that the Director may, at their 
discretion, delegate the review of a Board decision in an AIA 
proceeding.
    As described on the Director Review web page, decisions made on 
Director Review are not precedential by default, but may be designated 
as precedential by the Director. See also SOP 2. Additional 
implementation details of the Director Review process are provided on 
the Director Review web page. On the rule's effective date, a new 
Director Review web page reflecting the content of the rule will 
supersede the Revised Interim Director Review Process page.

Application of Director Review Process to Date

    As of August 1, 2024, the USPTO has received 382 compliant requests 
for Director Review under the interim process. Of those requests, the 
Director Review process was completed for 369 requests. Of the 369 
completed requests, 24 requests were granted, two requests were 
delegated to the DRP, six requests were withdrawn, and the remaining 
337 requests were denied. Additionally, sua sponte Director Review was 
initiated in 36 cases.
    Since July 24, 2023, when the interim process for Director Review 
was expanded to allow for requests of decisions on institution, the 
majority of requests received have been from decisions on institution. 
Specifically, between July 24, 2023, and August 1, 2024, 49 requests 
were received for review of final written decisions and 115 requests 
for review of decisions on institution.

Rulemaking Considerations

    A. Administrative Procedure Act: The changes in this final rule 
involve rules of agency practice and procedure, and/or interpretive 
rules, and do not require notice-and-comment rulemaking. See Perez v. 
Mortg. Bankers Ass'n, 135 S.Ct. 1199, 1204 (2015) (explaining that 
interpretive rules ``advise the public of the agency's construction of 
the statutes and rules which it administers'' and do not require 
notice-and-comment rulemaking when issued or amended); Cooper Techs. 
Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that 5 
U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), do not require notice-and-
comment rulemaking for ``interpretative rules, general statements of 
policy, or rules of agency organization, procedure, or practice''); and 
JEM Broadcasting Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir. 1994) 
(explaining that rules are not legislative because they do not 
``foreclose effective opportunity to make one's case on the merits'').
    Nevertheless, the USPTO has chosen to seek public comment before 
implementing this rule to benefit from the public's input.
    B. Regulatory Flexibility Act: For the reasons set forth in this 
final rule, the Senior Counsel for Regulatory and Legislative Affairs, 
Office of General Law, USPTO, has certified to the Chief Counsel for 
Advocacy of the Small Business Administration that the changes set 
forth in this final rule would not have a significant economic impact 
on a substantial number of small entities. See 5 U.S.C. 605(b).
    This final rule sets forth expressly the rules governing Director 
Review. The changes do not create additional procedures or requirements 
or impose any additional compliance measures on any party beyond the 
interim process for Director Review, nor do these changes cause any 
party to incur additional costs. Therefore, any requirements resulting 
from these changes are of minimal or no additional burden to those 
practicing before the Board.
    For the foregoing reasons, the changes in this final rule will not 
have a significant economic impact on a substantial number of small 
entities.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866 (September 30, 1993), as amended by Executive 
Order 14094 (April 6, 2023).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563 (January 
18, 2011). Specifically, and as discussed above, the Office has, to the 
extent feasible and applicable: (1) made a reasoned determination that 
the benefits justify the costs of the rules; (2) tailored the rules to 
impose the least burden on society consistent with obtaining the 
regulatory objectives; (3) selected a regulatory approach that 
maximizes net benefits; (4) specified performance objectives; (5) 
identified and assessed available alternatives; (6) involved the public 
in an open exchange of information and perspectives among experts in 
relevant disciplines, affected stakeholders in the private sector, and 
the public as a whole, and provided online access to the rulemaking 
docket; (7) attempted to promote coordination, simplification, and 
harmonization across government agencies and identified goals designed 
to promote innovation; (8) considered approaches that reduce burdens 
and maintain flexibility and freedom of choice for the public; and (9) 
ensured the objectivity of scientific and technological information and 
processes.
    E. Executive Order 13132 (Federalism): This rulemaking pertains 
strictly to Federal agency procedure and does not contain policies with 
federalism implications sufficient to warrant the preparation of a 
Federalism Assessment under Executive Order 13132 (August 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian Tribal 
governments; or (3) preempt Tribal law. Therefore, a Tribal summary 
impact statement is not required under Executive Order 13175 (November 
6, 2000).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because it is not 
likely to have a significant adverse effect on the supply, 
distribution, or use of energy. Therefore, a Statement of Energy 
Effects is not required under Executive Order 13211 (May 18, 2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (February 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (April 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (March 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), the USPTO will submit a report containing 
the rule and other required information to the United States Senate, 
the United States House of Representatives, and the Comptroller General 
of the Government Accountability Office. The changes in this rulemaking 
are not expected to

[[Page 79751]]

result in an annual effect on the economy of $100 million or more; a 
major increase in costs or prices; or significant adverse effects on 
competition, employment, investment, productivity, innovation, or the 
ability of United States-based enterprises to compete with foreign-
based enterprises in domestic and export markets. Therefore, this 
rulemaking will not be a ``major rule'' as defined in 5 U.S.C. 804(2).
    L. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this rulemaking do not involve a Federal intergovernmental mandate that 
will result in the expenditure by State, local, and Tribal governments, 
in the aggregate, of $100 million (as adjusted) or more in any one 
year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of $100 million (as adjusted) or more 
in any one year, and will not significantly or uniquely affect small 
governments. Therefore, no actions are necessary under the provisions 
of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
    M. National Environmental Policy Act of 1969: This rulemaking will 
not have any effect on the quality of the environment and is thus 
categorically excluded from review under the National Environmental 
Policy Act of 1969. See 42 U.S.C. 4321 et seq.
    N. National Technology Transfer and Advancement Act of 1995: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions that involve the use of 
technical standards.
    O. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of 
1995 (44 U.S.C. 3501-3549) requires that the Office consider the impact 
of paperwork and other information collection burdens imposed on the 
public. This rulemaking does not add any additional information 
requirements or fees for parties before the Board. Therefore, the 
Office is not resubmitting collection packages to OMB for its review 
and approval because the revisions in the final rule do not materially 
change the information collections approved under OMB control number 
0651-0069.
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall any person be subject to, a penalty for 
failure to comply with a collection of information subject to the 
requirements of the Paperwork Reduction Act unless that collection of 
information displays a currently valid OMB control number.
    P. E-Government Act Compliance: The USPTO is committed to 
compliance with the E-Government Act to promote the use of the internet 
and other information technologies, to provide increased opportunities 
for citizen access to Government information and services, and for 
other purposes.

List of Subjects in 37 CFR Part 42

    Administrative practice and procedure, Inventions and patents, 
Lawyers.

    For the reasons set forth in the preamble, the USPTO amends 37 CFR 
part 42 as follows:

PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

0
1. The authority citation for part 42 is revised to read as follows:

    Authority:  35 U.S.C. 2(b)(2), 3, 6, 21, 23, 41, 134, 135, 143, 
153, 311, 312, 314, 316, 318, 321-326, 328; Pub. L. 112-29, 125 
Stat. 284; and Pub. L. 112-274, 126 Stat. 2456.


0
2. Add Sec.  42.75 to read as follows:


Sec.  42.75   Director review.

    (a) Director Review generally. In a proceeding under this part, the 
Director may review any decision on institution under 35 U.S.C. 135, 
314, or 324, any final decision under 35 U.S.C. 135, 318, or 328, any 
decision granting rehearing of such a decision, or any other decision 
concluding a proceeding brought under 35 U.S.C. 135, 311, or 321. In 
the course of reviewing such a decision, the Director may review any 
interlocutory decision rendered by the Board in reaching that decision. 
For purposes of this section, the term ``final decision'' is defined as 
a ``final decision'' under 35 U.S.C. 135 as well as a ``final written 
decision'' under 35 U.S.C. 318 or 328.
    (b) Sua sponte Director review. The Director, on the Director's own 
initiative, may initiate sua sponte Director Review of a decision as 
provided in paragraph (a) of this section. Absent exceptional 
circumstances, any sua sponte Director Review will be initiated within 
21 days after the expiration of the period for filing a request for 
rehearing pursuant to Sec.  42.71(d).
    (c) Requests for Director review. A party to a proceeding under 
this part may file one request for Director Review of a decision as 
provided in paragraph (a) of this section, instead of filing a request 
for rehearing of that decision pursuant to Sec.  42.71(d), subject to 
the limitations herein and any further guidance provided by the 
Director.
    (1) Timing. The request must be filed within the time period set 
forth in Sec.  42.71(d) unless an extension is granted by the Director 
upon a showing of good cause. No response to a Director Review request 
is permitted absent Director authorization.
    (2) Format and length. A request for Director Review must comply 
with the format requirements of Sec.  42.6(a). Absent Director 
authorization, the request must comply with the length limitations for 
motions to the Board provided in Sec.  42.24(a)(1)(v).
    (3) Content. Absent Director authorization, a request for Director 
Review may not introduce new evidence.
    (d) Final agency decision. A decision on institution, a final 
decision, a decision granting rehearing of such decision on institution 
or final decision, or any other decision concluding a proceeding 
brought under 35 U.S.C. 135, 311, or 321 shall become the final agency 
decision unless:
    (1) A party requests rehearing or Director Review within the time 
provided by Sec.  42.71(d) or an extension of time for a request for 
Director Review is granted pursuant to paragraph (c)(1) of this 
section; or
    (2) The Director initiates sua sponte review as provided by Sec.  
42.75(b). Upon denial of a request for Director Review of a final 
decision, of a decision granting rehearing of a final decision, or of 
any other decision concluding a proceeding brought under 35 U.S.C. 135, 
311, or 321, the Board's decision becomes the final agency decision.
    (e) Process--(1) Effect on underlying proceeding. Unless the 
Director orders otherwise, and except as provided in paragraph (e)(3) 
of this section, a request for Director Review or the initiation of 
review on the Director's own initiative does not stay the time for the 
parties to take action in the underlying proceeding.
    (2) Grant and scope. If the Director grants Director Review, the 
Director shall issue an order or decision that will be made part of the 
public record, subject to the limitations of any protective order 
entered in the proceeding or any other applicable requirements for 
confidentiality. If the Director grants review and does not 
subsequently withdraw the grant, the Director Review will conclude with 
the issuance of a decision or order that provides the reasons for the 
Director's disposition of the case.
    (3) Appeal. A party may appeal a Director Review decision of a 
final decision under 35 U.S.C. 135, 318, or 328, a decision granting 
rehearing of a final decision under 35 U.S.C. 135, 318, or 328, or any 
other appealable decision concluding a proceeding brought under

[[Page 79752]]

35 U.S.C. 135, 311, or 321 to the United States Court of Appeals for 
the Federal Circuit using the same procedures for appealing other 
decisions under 35 U.S.C. 141(c), 141(d), 319. Director Review 
decisions on decisions on institution are not appealable. A request for 
Director Review of a final decision, a decision granting rehearing of a 
final decision, or any other appealable decision concluding a 
proceeding brought under 35 U.S.C. 135, 311, or 321, or the initiation 
of a review on the Director's own initiative of such a decision, will 
be treated as a request for rehearing under Sec.  90.3(b)(1) of this 
chapter and will reset the time for appeal until after all issues on 
Director Review in the proceeding are resolved.
    (f) Delegation. The Director may delegate their review of a 
decision provided in paragraph (a) of this section, subject to any 
conditions provided by the Director.
    (g) Ex parte communications. All communications from a party to the 
Office concerning a specific Director Review request or proceeding must 
copy counsel for all parties. Communications from third parties 
regarding a specific Director Review request or proceeding, aside from 
authorized amicus briefing, are not permitted and will not be 
considered.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2024-22194 Filed 9-30-24; 8:45 am]
BILLING CODE 3510-16-P