USPTO Memo Signals Increased Discretionary Denials as Director Takes Direct Control of PTAB Institution Decisions

On March 26, 2025, the United States Patent and Trademark Office (USPTO) announced temporary changes to how the Patent Trial and Appeal Board (PTAB) will manage its workload, particularly concerning America Invents Act (AIA) trial proceedings such as inter partes reviews (IPRs) and post-grant reviews (PGRs).

Key Changes to Institution Decisions

The memorandum, issued by Acting Under Secretary of Commerce for Intellectual Property and Acting Director Coke Morgan Stewart, establishes a bifurcated approach for handling institution decisions:

1. Separation of discretionary and merits considerations: Decisions on whether to institute an IPR or PGR will be split between discretionary considerations and merit-based/statutory considerations.
2. Director’s role: “The Director, in consultation with at least three PTAB judges, will determine whether discretionary denial of institution is appropriate.” If denial is appropriate, the Director will issue that decision directly.
3. Panel review: If discretionary denial is not appropriate, the petition will be referred to a three-member PTAB panel for normal handling, including a decision on institution addressing the merits.

New Briefing Process

The memorandum establishes a separate briefing schedule specifically for discretionary denial arguments:

1. Patent owners may file a brief explaining any bases for discretionary denial within two months of the Notice of Filing Date.
2. Petitioners may file an opposition brief within one month after the patent owner’s filing.
3. Word limits are set at 14,000 words for discretionary denial briefing, with reply briefs limited to 5,600 words.

Discretionary Considerations

The memorandum outlines factors that may be considered when evaluating discretionary denial, including:

• Whether the PTAB or another forum has already adjudicated the challenged claims
• Changes in law or new judicial precedent affecting patentability
• Strength of the unpatentability challenge
• Extent of reliance on expert testimony
• Settled expectations regarding how long claims have been in force
• Economic, public health, or national security interests
• Any other considerations bearing on the Director’s discretion

Implementation Timeline

These interim procedures apply to IPR and PGR proceedings where the deadline for the patent owner’s preliminary response has not yet passed. For cases where the time for filing discretionary denial briefing has already elapsed, patent owners may submit such briefing within one month of the memorandum date.

 Purpose and Duration

The memorandum states: “These processes aim to improve PTAB efficiency, maintain PTAB capacity to conduct AIA proceedings, reduce pendency in ex parte appeals, and promote consistent application of discretionary considerations in the institution of AIA proceedings.” The USPTO specifically notes these measures are “temporary in nature due, in part, to the current workload needs of the PTAB.”

 Guidance for Practitioners

This procedural change creates strategic considerations for both patent owners and petitioners:

1. For patent owners: Consider preparing focused discretionary denial arguments for the Director’s review, separate from merits-based arguments.
2. For petitioners: Be prepared to respond to discretionary denial arguments more rapidly than before and consider how to address both discretionary factors and merits.
3. For all parties: Note that the Director will consider PTAB’s ability to comply with pendency goals for ex parte appeals and statutory deadlines for AIA proceedings, suggesting workload concerns may influence institution decisions.

These changes appear designed to address PTAB’s workload challenges while maintaining the statutory obligations for both ex parte appeals and AIA proceedings.

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.