Patent Trial and Appeal Board (PTAB)

Under 35 U.S.C. 6(b) the Board reviews adverse decisions of examiners on applications, reviews appeals of reexaminations, conducts derivation proceedings, and conducts inter partes reviews and post-grant reviews². The USPTO describes two main kinds of work: ex parte appeals, and AIA proceedings in which a third party who is not the patent owner, called a petitioner, challenges the validity of claims in an issued patent¹.

For derivation proceedings, a petition for the same or substantially the same invention as a claim in a patent issued on an earlier application, or in an earlier published application, may not be filed more than 1 year after the earlier patent was granted or the earlier application was published, whichever is earlier. The Director's decision whether to institute a derivation proceeding is final and not appealable⁴.

The administrative patent judges are persons of competent legal knowledge and scientific ability, appointed by the Secretary of Commerce in consultation with the Director². Each appeal, derivation proceeding, post-grant review and inter partes review is heard by at least 3 members of the Board, designated by the Director².

• The Arthrex decision. In United States v. Arthrex (2021) the Supreme Court held that the unreviewable authority wielded by administrative patent judges during inter partes review was incompatible with their appointment by the Secretary to an inferior office. The Court held that the Director may review final PTAB decisions and, upon review, may issue decisions on behalf of the Board⁷.
• Director Review. The USPTO codified a Director Review process in 37 CFR 42.75, effective October 31, 2024⁸. A party to a Board decision may request Director Review of a decision on institution, a final decision, or another decision concluding a proceeding. Requests are limited to decisions presenting an abuse of discretion, important issues of law or policy, erroneous findings of material fact, or erroneous conclusions of law⁸. The Director also keeps discretion to initiate Director Review without a request⁸.
• Institution by the Director. Effective October 20, 2025 the Director determines whether to institute inter partes review and post-grant review trials, in consultation with at least three PTAB judges, and an instituted proceeding is referred to a three-member panel of the Board⁹. See inter partes review for institution and discretionary denial.

In an inter partes review, a party dissatisfied with the Board's final written decision may appeal under 35 U.S.C. 141 to 144 (35 U.S.C. 319)¹⁰. The Director's decision whether to institute a review is final and nonappealable (35 U.S.C. 314(d))¹¹. After an ex parte appeal, an applicant dissatisfied with the Board's decision may appeal to the Federal Circuit (35 U.S.C. 141(a))¹², or, unless such an appeal has been taken, bring a civil action against the Director in the Eastern District of Virginia (35 U.S.C. 145)¹³.

The decision below is the US Supreme Court's ruling on the structure of the PTAB. It is an example of how the Board's role is treated in US law, and says nothing about either party beyond the decision itself.

Decided June 21, 2021. The Court held that the unreviewable authority of administrative patent judges during inter partes review is incompatible with their appointment, and that the Director may review final PTAB decisions. It vacated the judgment and remanded7.