In a bulletin issued July 24, 2022, focused on Director Review of Patent Trial and Appeal Board (PTAB) decisions in AIA trials, the USPTO also announced the creation of “a new Appeals Review Panel (ARP), which may be convened by the Director sua sponte, to review PTAB ex parte, reexamination, or reissue appeal decisions,” and published a memorandum and updated internal operating procedures pertaining to ex parte appeals. The ARP and memorandum will be of interest to practitioners and stakeholders with ex parte PTAB appeals.
The New Appeals Review Panel (ARP)
The bulletin does not say much about the new ARP or why it was created, but promises the USPTO “will engage in a public notice and comment rulemaking process on these interim updates in the near future to allow stakeholders to weigh in on the changes.”
According to the ARP webpage, the Director may “at her or his sole discretion” sua sponte convene an ARP to review PTAB decisions in ex parte appeals, re-examination appeals, and reissue appeals. The webpage makes clear that “[r]equests for ARP review will not be accepted or considered.” According to the webpage, the ARP “is selected by the Director impartially and, by default, consists of the Director, the Commissioner for Patents, and the Chief Judge of the Patent Trial and Appeal Board.”
As outlined on the webpage, ARP decisions are not subject to rehearing, but can be appealed to the Federal Circuit. Although stakeholders cannot request an ARP, once an ARP issues a decision, any person can nominate the decision to be designated as precedential or informative.
The USPTO will post proceedings subject to ARP review on its new ARP Status webpage.
The New Guidance for Ex Parte Appeals
The “Guidance Memorandum for the Ex Parte Appeals Process” announced in the bulletin is dated July 13, 2023, and covers various topics, from when it might be acceptable for a panel to not reach all grounds of rejection on appeal, to how to treat provisional obviousness-type double patenting rejections, to when to designate a decision as containing a new ground of rejection.
One thing that caught my eye is the reminder that “It is optional, not mandatory, for a Board panel to issue a new ground of rejection, where it identifies such a ground.” The memorandum explains:
Our statutory role is not to determine patentability, but to review rejections made by primary examiners.
The memorandum draws a line between the PTAB’s role and the Director’s role, which “is to determine patentability.” Thus, the memorandum emphasizes, “Making a new ground of rejection is therefore an exercise of discretion,” not mandatory. That said, the memorandum indicates that an affirmance should be designated as a new ground of rejection “where the panel provides a new or modified rationale for the grounds of rejection made by the Examiner and the panel determines that it would unfair, i.e., a violation of due process, not to give an Appellant an opportunity to respond to the new or modified rationale.”