The U.S. Supreme Court has recently made a significant decision concerning the Patent Trial and Appe[...]
The U.S. Supreme Court has recently made a significant decision concerning the Patent Trial and Appeal Board (PTAB) system, which is utilized for patent challenges. In the case of United States v. Arthrex, a patent holder challenged the statutory authority of the judges appointed by the Patent Office to hear Inter Partes Review cases. These judges, known as Administrative Patent Judges (APJs), sit on PTAB panels of three.
The legal question at hand was whether these APJs are considered principal officers or inferior officers. If they are deemed inferior officers, their decisions must be reviewed by the USPTO Director or another principal officer. Conversely, if they are principal officers, then all current APJ appointments would be invalid as they were not made by the President with the advice and consent of the Senate.
The Court determined that the APJs are inferior officers, not principal officers. Furthermore, the Court ruled that the USPTO has the authority to review PTAB panel decisions as they are made. This means that instead of the Director being bound by the decisions of inferior officers, those officers’ decisions must be supported by their superior.
What are the implications for inventors who sought a patent and were later told, post-issuance (e.g., during an inter partes review), that their innovation was unpatentable? Will the Arthrex decision lead to a surge of dissatisfied applicants seeking decisions from the CAFC compelling the PTAB to reconsider? It is possible, at least initially, for those not time-barred. However, it is unlikely that the long-term outcome will be a mass invalidation of recent PTAB decisions. The Director can institute a review of recent decisions and decide whether to affirm or revisit them, particularly for patents where the Director has not yet issued a certificate of unpatentability. Cases not time-barred, where the PTAB has decided not to rehear the issue, may need to be adjudicated in the CAFC.
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