Background
This case is the second major Federal Circuit chapter in the long-running Arthrex patent saga. After the Supreme Court’s June 2021 decision in United States v. Arthrex established that USPTO Director review of PTAB decisions is constitutionally required, Arthrex sought Director review of the PTAB’s final written decision in an inter partes review (IPR) that had invalidated claims of Arthrex’s bone anchor patent.
The problem: when Arthrex filed its Director review request, there was no presidentially-appointed, Senate-confirmed Director of the USPTO. Drew Hirshfeld — the Commissioner for Patents — was performing the Director’s functions in an acting capacity. Hirshfeld denied Arthrex’s Director review request. Arthrex then appealed to the Federal Circuit, arguing (1) that Hirshfeld lacked constitutional authority to exercise Director review, and (2) that the Federal Vacancies Reform Act (FVRA) prohibited him from deciding Director review requests.
In the underlying IPR, Smith & Nephew had successfully challenged Arthrex’s “’907 patent,” with the PTAB finding that the challenged claims were anticipated by prior art. Arthrex contested the effective filing date of its patent, arguing its earlier provisional application provided adequate written description for the claimed flexible eyelet design. The PTAB disagreed.
The Court’s Holding
The Federal Circuit rejected all of Arthrex’s constitutional and statutory challenges. Chief Judge Moore, writing for a unanimous panel, held that an inferior officer — such as the Commissioner for Patents — may constitutionally perform the functions of a vacant principal officer position on a temporary, acting basis. Citing the 1898 Supreme Court decision in United States v. Eaton, the court explained that it is not unconstitutional for inferior officers to temporarily step in when a principal officer position is vacant, as long as the arrangement is genuinely temporary.
On the FVRA challenge, the court held that Director review of PTAB decisions is a “delegable duty” under 35 U.S.C. § 3(b)(3)(B), which permits the Director to delegate functions to other USPTO officers. The FVRA restricts only duties “required by statute” to be performed personally by a Senate-confirmed officer; because Congress had authorized delegation of Director review to subordinate officials, Hirshfeld was lawfully exercising delegated authority.
The court also rejected a Take Care Clause challenge, noting that Hirshfeld was removable from his acting role without cause, which was sufficient to preserve the President’s supervisory authority.
On the merits, the Federal Circuit affirmed the PTAB’s invalidity finding, agreeing that Arthrex’s provisional application lacked adequate written description to support the claimed flexible eyelet and therefore could not be used to establish the earlier priority date needed to antedate the prior art.
Key Takeaways
- The USPTO can continue to exercise Director review authority during vacancies in the Director position by delegating those functions to the Commissioner for Patents or other acting officials, without violating the Appointments Clause or the FVRA.
- The Federal Vacancies Reform Act does not bar delegation of Director review authority over PTAB decisions — that function is delegable under the Patent Act and does not require personal performance by a Senate-confirmed official.
- This decision validated the constitutionality of hundreds of thousands of patents signed and patent decisions made by acting USPTO officials during prior vacancies, avoiding potentially massive disruption to the patent system.
- Provisional applications must provide adequate written description for every limitation of later-filed claims if the patent owner seeks to use the earlier priority date — this principle continues to be strictly applied in IPR proceedings.
Why It Matters
The USPTO Director position is filled by presidential nomination and Senate confirmation, and vacancies can last months or years depending on the political climate. If the Federal Circuit had held that acting officials could not exercise Director review authority, it would have effectively shut down the post-Arthrex Director review mechanism whenever a vacancy existed — which is a frequent occurrence. The ruling ensures the PTAB Director review system can function continuously, regardless of whether the Director’s chair is occupied by a confirmed official.
More broadly, the decision provides important guidance on government continuity: when a principal officer position is vacant, the government does not come to a halt. Lawfully designated acting officials can carry out constitutionally required functions, at least on a temporary basis. This has implications well beyond the USPTO — it answers a recurring question about government operations during transitions.