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20 December 2022PatentsStaff Writer

Fed Circ rules on interim USPTO commissioner reviews

The temporary director’s authority was challenged | Question mark over constitutionality of granted director reviews | SCOTUS.

The US Court of Appeals for the Federal Circuit has held that former commissioner of patents Drew Hirshfeld had the authority to reject a review request during his time as interim head of the US Patent and Trademark Office (USPTO).

In a ruling handed down yesterday, December 19, the Federal Circuit concluded that the acting director had “the constitutional and statutory authority to act on requests for director review”.

In the wake of the US Supreme Court’s decision in US v Arthrex—where the court held that USPTO directors can review the Patent Trial and Appeal Board’s (PTAB) decisions—the Federal Circuit remanded a decision to allow Fall Line Patents to seek director rehearing of a PTAB final written decision.

At the time, the then-commissioner for patents, who had been delegated the functions and duties of the USPTO director during a vacancy, denied the request for rehearing.

In response, Fall Line challenged whether Hirshfeld had the constitutional and statutory authority to act on requests for director review.

Yesterday’s ruling confirmed that Hirshfeld had the authority to act on these requests.

Fall Line’s argument that the Patent Act doesn’t authorise delegations to the commissioners, even if the Act authorises delegations to other inferior officers, was rejected.

According to Fall Line, while the director can appoint officers and employees to the agency (under section 3(b)(3)(A) of the Patent Act) and delegate duties to them (under section 3(b)(3)(B) of the Patent Act), the office of the commissioner is instead established by 35 USC section 3(b)(2) meaning that the delegation authority doesn’t apply.

Circuit Judge Todd Hughes, on behalf of the court, noted that the Federal Circuit’s ruling in Arthrex II, handed down earlier this year, held that the Patent Act authorised the delegation of the director’s duties to the commissioner.

The court also rejected the argument that the delegation authority of section 3(b)(3)(B) is limited to delegates appointed by the director under section 3(b)(3)(A), citing the case of Ethicon Endo-Surgery v Covidien (2016). In this case the Federal Circuit held that section 3(b)(3) can’t be read to limit the ability of the director to delegate tasks to agency officials not mentioned in that section.

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14 April 2022   Kathi Vidal has officially taken the role of director of the US Patent and Trademark Office.
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5 August 2021   Early signs show that US v Arthrex is unlikely to herald a spate of inter partes reviews, but may fuel uncertainty around the scope of the acting USPTO director’s role, lawyers have told WIPR.