Rejected Post-Arthrex Bids Signal Uncertainty Over USPTO Director’s Authority

Loeb & Loeb Patent Litigation & Counseling partner Brent Babcock spoke with World Intellectual Property Review (WIPR) about Drew Hirshfeld’s – temporary leader of the U.S. Patent and Trademark Office – latest decision to deny the first two requests he received seeking review of Patent Trial and Appeal Board decisions since the U.S. Supreme Court's Arthrex ruling gave him that power in June 2021.

These decisions could ignite further controversy. According to Brent, Hirshfeld denied the requests “even though his authority to do so has been challenged at the U.S. Court of Appeals for the Federal Circuit”, and “he is neither the presidentially appointed director, nor the acting director.”

Despite this ongoing uncertainty around the incumbent director’s authority, the content and delivery of denial met with little surprise from practitioners, noted Brent.

“The director’s denial was a single line denial, as many PTAB practitioners had expected,” Brent told WIPR. “It appears that these denials are, and will be, akin to the Federal Circuit’s affirmances under Rule 36, or the Supreme Court’s denial of certiorari. It is likely that normal categories of objections to the panel’s final written decision will rarely, if ever, be able to gain traction in a director review.”