Arthrex, and the Rule That Makes You Choose

Supreme Court (Arthrex), plus a USPTO final rule effective 31 October 2024. Read from the primary document; quotations verified against its own text.

What it says

In Arthrex the Supreme Court held that decisions by Administrative Patent Judges must be subject to review by the USPTO Director, and a final rule effective October 31, 2024 formalised that review, limiting a party to requesting either Director Review or rehearing by the original panel but not both, and treating a request for both as a request for Director Review only.

Arthrex was a constitutional case: Administrative Patent Judges were exercising authority that had to be reviewable by someone the President appoints. The remedy was to make their decisions reviewable by the Director.

The 2024 rule turned that remedy into procedure, and added a fork. A party may request Director Review or panel rehearing, not both.

And the fork has a default. Asking for both is treated as having asked for Director Review only, which means the choice is made whether or not anyone intended to make it.

The deadline for institution decisions moved, and it moved by waiver rather than by rule. The rule as written gives fourteen days to request Director Review of a decision instituting trial. On June 29, 2026 the USPTO announced that the Director had waived that rule and extended the deadline to thirty days, and that in exceptional circumstances the Office may extend it further so long as the trial has not progressed meaningfully. The change came through a precedential decision, Light & Wonder, Inc. v. Evolution Malta Ltd., IPR2025-01072. A reader working from the rule text alone would calculate fourteen days and be wrong by sixteen.

What This Does Not Decide

The fork is a structural consequence, not a recommendation. Reporting that asking for both collapses into one is description. Telling a reader which route to take is not, and the distance between the two is a single sentence.

It does not say which route anyone should choose.
It does not say whether a particular request would succeed.
It concerns constitutional structure and Board procedure, not patentability.

Educational, not legal advice. This page reports what an authority says. Applying it to a matter is work for a registered practitioner with the file in front of them.

Sources

United States v. Arthrex, Inc. (U.S. 2021); USPTO final rule eff. Oct. 31, 2024
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