30 May 2022Sarah Speight

Fed Circ confirms Hirshfeld’s authority in Arthrex

The Federal Circuit has ruled that the interim commissioner of the United States Patent and Trademark Office (USPTO) had decision-making powers in the ongoing Arthrex case.

On Friday May 27, the US Court of Appeals rejected Arthrex’s appeal, in which it argued that the Patent Trial and Appeal Board’s (PTAB) had lacked the constitutional authority to issue a final decision because a temporary commissioner was in post.

Drew Hirshfeld, who served in the post for more than a year, had earlier denied Arthrex a director review of the case.

Medical manufacturer Arthrex sued Smith & Nephew and Arthrocare in 2015 over infringement of a surgical device patent (US Patent 9,179,907). The case, which began in the US District Court for the Eastern District of Texas, has since been heard twice in the Federal Circuit and once in the Supreme Court.

In its latest appeal, Arthrex reasoned that the Administrative Patent Judges (APJs) were not nominated by the President and confirmed by the Senate, as the Appointments Clause requires for principal officers.

But the court said: “Although an inferior officer generally cannot issue a final agency decision, he may perform the functions and duties of an absent PAS [Presidentially Appointed, Senate Confirmed] officer on a temporary, acting basis.”

Process updates

The USPTO has also  updated its decision-making process for the PTAB and the director review process, the latter of which will apply to final written decisions of the PTAB inter partes reviews and post-grant reviews.

The move, which was published a day prior to the Federal Circuit ruling, is intended to “promote consistent and clear PTAB decision-making” and “secure a robust and reliable patent system necessary to incentivise and protect innovation” in the US.

Described as an interim measure, the updated processes are based on decision circulation processes used by the Federal Circuit and “make clear that the director is not involved, pre-issuance, in directing or otherwise influencing panel decisions, and the PTAB panel has final authority and responsibility for the content of a decision”.

Committee vacancies

Meanwhile, the USPTO is seeking nominations for vacancies at the Patent and Trademark Committees.

Members of the Public Advisory Committee (PPAC) and the Trademark Public Advisory Committee (TPAC) represent the interests of the public and the stakeholders of the USPTO.

There are up to three vacancies to fill on each committee for the three-year posts, participation in which can be remote. Each committee has nine voting members who are appointed by, and serve, the secretary of commerce.

USPTO director Kathi Vidal said: “I’m looking forward to working closely with the PPAC and TPAC as we get back to first principles and reshape policy and procedures for the good of our country.”

She added: “The diverse representation and views of representation and views on the Advisory Committees will help the USPTO be a catalyst for inclusive innovation, economic prosperity, US competitiveness, national security, and world problem-solving by incentivising and protecting more innovation, especially in key technology areas, and bring that innovation to impact.”

The committees were created by statute under the American Inventors Protection Act to advise the secretary of commerce, the under secretary of commerce for intellectual property and the director of the USPTO on the management of patent and trademark operations.

The USPTO director is required to cooperate with the committees, provide them with access to information, and consider their advice.

Submissions close on July 1, with the posts to commence on December 1 2022. Submission details can be found on the Federal Register.

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4 November 2021   The acting director of the US Patent and Trademark Office Drew Hirshfeld has agreed for the first time to review a final written decision from the Patent Trial and Appeal Board (PTAB) after being given oversight over the board’s rulings in the Supreme Court’s Arthrex decision.