USPTO seeks opinions on Arthrex director reviews
The US Patent and Trademark Office (USPTO) is seeking input to help formalise the process that allows the director to review decisions handed down by the Patent Trial and Appeal Board (PTAB).
Following last year’s Supreme Court ruling in United States v Arthrex, a new process was implemented to ensure that administrative patent judges for the PTAB are classed as “inferior officers” by allowing their decisions to be reviewable by the current head of the USPTO.
In an announcement made on Friday, April 22, the newly-appointed USPTO director Kathi Vidal said that it will keep the current interim director review process, with a few additional suggestions from Vidal herself, while the office seeks public opinion on how to best formalise the system.
Vidal said: “In the coming weeks, we intend to issue a Request for Comment (RFC) on the Director review process and related processes the USPTO uses to promote innovation through consistent and transparent decision-making and the issuance and maintenance of strong patents.
“We plan to formalize these processes once we hear from a broad range of stakeholders.”
Stakeholders looking to provide input are “strongly encouraged to provide a priority-ranked list of issues being raised”
The USPTO also outlined the core issues that may warrant review by the Director, these include material errors of fact or law in ta PTAB decision, matters that the PTAB misapprehended or overlooked, novel issues of law or policy, and issues on which PTAB panel decisions are split.
‘Article of manufacturer’ report
The office also published a summary of public responses to an RFC on the “article of manufacturer” requirement.
Article of manufacturer details one of the four main categories under which inventions may be patented, with the others being a process/method, a machine, and a composition of matter.
The “Summary of public views on the article of manufacture requirement of 35 U.S.C. Section 171,” comprises comments addressing whether the USPTO’s interpretation of the article of manufacture requirement should be reevaluated to incentivise and protect design innovation.
Several correspondents claimed that the USPTO’s guidelines were “too restrictive” and requested modifications to the guidelines to allow the office to better protect designs in new and emerging technologies.
However, other responders also gave their reasoning as to why some of these newer technologies should not be eligible for patenting.
One commenter made an argument that certain protections would not incentivise innovation but “instead stifle it”, others raised concerns about the lack of prior art for inventions not previously patenable and expressed First Amendment concerns.
The full report can be found here.
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