Ex-Patent Solicitor Takes on Director Review Amid Rising Demand

The US Patent and Trademark Office has received more than 300 petitions challenging decisions on patent validity since a 2021 Supreme Court opinion established the director’s power to reverse tribunal decisions.

More than two years and exactly 313 requests later, the office named its former solicitor to lead the handling of director review requests since “managing the process is likely becoming a full time job within itself,” said former USPTO acting deputy director Drew Hirshfeld.

In his new “director review executive” position, Thomas Krause focuses on “implementing and strengthening” the process that allows parties to seek the director’s reconsideration of Patent Trial and Appeal Board decisions, a USPTO spokesperson said. The role’s creation and a recent notice of proposed rulemaking eliminating senior leadership’s pre-issuance involvement in PTAB decisions are both focused on “delivering high-quality, consistent, and timely results for our stakeholders,” said the USPTO spokesperson.

The creation of the position is just another indication that the PTAB is taking the Supreme Court’s decision seriously, said Knobbe Martens Partner Ben Everton, and “setting up a more robust system for director review.”

Krause now chairs the Director Review Advisory Committee, which was created to assist the director with the process and considers all director review requests, according to information provided by an agency official in response to a request for Krause’s new job description. He’ll also ensure that the requests quickly and efficiently make it through to final disposition according to the director’s discernment, per the job description.

Uptick in Requests

The director’s power to overturn PTAB decisions originated with a 2021 US Supreme Court decision and continues to evolve. The office received 167 director review requests in 2021, 69 in 2022, and 81 so far this year, according to agency data. There were eight requests pending as of Nov. 15.

The position “seems like a logical next step to ensure efficiency of the process,” said Hirshfeld, who noted that he wasn’t familiar with the details of the new position.

Haynes and Boone LLP partner David O’Brien agreed that formal leadership of the review process is appropriate as the volume of challenges increases. “If I was the director, I imagine I’d have an awful lot of other things to do than just handling all the director review requests, so it does make sense to have a point person,” he said.

The PTO in July announced it was extending director review to institution decisions, enhancing the need for a formal director, said Everton.

In the last two weeks alone USPTO Director Kathi Vidal has ordered a new independent Delegated Rehearing Panel to conduct its first two reviews of PTAB decisions, both institution rulings. The panel was established in July as a way for the director to delegate decisions she deemed eligible for reconsideration.

Hirshfeld said he supports such delegations. “The director needs time to run the agency without getting bogged down in too many appeals.”

The uptake of review requests isn’t surprising, said O’Brien. “Clients don’t request review—director or panel—willy nilly,” he said. The number of institution decisions involved makes sense because “it’s the only option. There is no appellate review, so I think there are more parties that are willing to make a go of it.”

For those who want to see more director review, Everton said it’s “a promising sign that she’s delegating and creating these delegated panels to take on some of that work.”

Parties currently can’t appeal PTAB decisions denying or granting inter partes review to the US Court of Appeals for the Federal Circuit as they can for final decisions on a patent’s validity. Intel Corp. and Edwards Lifesciences Corp.‘s are seeking US Supreme Court review of that issue, which the PTO opposed on Nov. 9.

Unsettled Issues

Expansion of the process could allow the PTO to address more important issues, Everton said. “It does seem like the director and the PTAB are interested in discretionary denial for sure,” he added, as well as sanctions matters.

Practitioners say Krause’s background is a good match for the job, which he moved into Oct. 16, less than two weeks after the PTO announced a rulemaking that practitioners said marked a push to curb political influence at the board.

He became solicitor in 2019 after first joining the office in 2002. In the role, he was tasked with assisting the Office of the Solicitor General in Supreme Court cases involving copyrights and patents and defending PTAB and Trademark Trial and Appeal Board decisions before the Federal Circuit, among other responsibilities.

“The solicitor and the solicitor’s team are constantly looking at the decisions of the Office—those that are appealed at least—and deciding on ones for which they may need to intervene or defend agency action,” O’Brien said. That’s a good fit for the new role and “what you’re going to need to do for your post-decision consistency determinations at the Board.”

A PTO spokesperson said “Director Vidal felt that Tom’s institutional knowledge and expertise would be uniquely valuable in this role, and she was grateful that he accepted this new leadership challenge.”