In an unexpected decision, the Director of the U.S. Patent and Trademark Office (USPTO) has recently vacated a denial of institution from the Patent Trial and Appeal Board (PTAB), as the decision contradicted Federal Circuit precedent on anticipation and written description for a method of treatment patent.
According to a report on JD Supra, a Petitioner had filed a request for rehearing and a Precedential Opinion Panel review after the PTAB initially rejected its petition for post-grant review. Surprisingly, it was the Director of the USPTO who decided to conduct a Director review, without any prompt.
The Director ruled that the PTAB had failed to correctly determine a number of key legal questions. Firstly, they questioned whether a particular species inherently anticipated the challenged claims, and secondly, they examined whether the claims were supported by an adequate written description.
The importance of this decision can’t be understated. As legal professionals, we are well aware that the PTAB plays a significant role in determining the validity of patents. In this unique scenario, the decision of the Director to personally review the PTAB’s ruling opens a pathway for Petitioners who may feel aggrieved by the PTAB’s decisions. This move elevates the importance of the Director’s position within the patent review process while demonstrating that no authority, including the PTAB, is above error and correction.
This case should serve as a reminder for the legal community to never neglect the possibility of seeking a Director review. All legal professionals, especially those dealing with patents, should pay close attention to how this changes the dynamics of post-grant reviews in the near future.