USPTO Expands Director Review to Institution Decisions

By Ferraiuoli LLC

The United States Patent and Trademark Office (USPTO) has expanded the Director Review (DR) option to institution decisions, giving parties an additional opportunity to challenge the validity of their patents before the Patent Trial and Appeal Board (PTAB).

Previously, DR was only available for PTAB decisions on final written decisions. The extension of DR to institution decisions is a significant change, as it could help to ensure that only valid patents are allowed to proceed to trial.

The USPTO made the decision to extend DR to institution decisions after considering feedback from stakeholders. The agency received a number of requests from parties who wanted to have the option to request DR of institution decisions. The USPTO also found that there were a number of cases where DR could have been helpful in preventing the institution of IPRs that were ultimately unsuccessful.

The extension of DR to institution decisions is one of a number of changes that the USPTO has made to its patent review process in recent years. The agency has also made changes to the PTAB's procedures for rehearing and appeal, and it has created a new process for reviewing precedential opinions. These changes are designed to make the patent review process more efficient and effective, and to ensure that only valid patents are allowed to issue.

Ferraiuoli LLC

Ferraiuoli LLC (FLLC) was founded in 2003 by the late Blas Ferraiuoli-Martínez, Eugenio Torres-Oyola and María Marchand-Sánchez. This group was then joined in 2004 by Fernando J. Rovira-Rullán, thus forming the founding core of FLLC. FLLC has grown exponentially since its founding from a law firm with three attorneys and a support staff of three to its current size of 54 attorneys with a support staff of 38. Also, FLLC has grown from initially being known as an intellectual property and corporate law boutique law firm to a multiservice law firm that handles most matters relevant to a business while continuing to earn praise for its leading intellectual property and corporate practices.

FLLC has been ranked as a leading law firm in Puerto Rico by the professional publication Chambers Latin America in intellectual property, corporate, bankruptcy, labor & employment, real estate, and tax law. Moreover, 17 FLLC partners have been ranked as leaders in their field by the same publication. 4 FLLC partners are ranked as leaders in Intellectual Property, no other firm has more than 2. This recognition in such a short period of time is a tribute to FLLC’s business model.

FLLC prides itself in doing its work faster and more cost-efficiently yet with the same quality as that of its main competitors. The founding name partners are available at all times to attend to client matters. Their work ethic sets the tone for the rest of the firm. FLLC’s founders’ goal has been steady from the outset: become one of the premier multiservice law firms in Puerto Rico.

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