On March 24, 2025, the United States Patent and Trademark Office (USPTO) published an updated Guidance memorandum on its recission of the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” This update, available on the PTAB resources page, outlines significant changes to how the Patent Trial and Appeal Board (PTAB) will handle discretionary denials in Inter Partes Review (IPR) and Post-Grant Review (PGR) proceedings, particularly when parallel district court litigation is ongoing.
Key Updates to the Guidance Memorandum
The USPTO has introduced a bifurcated decision-making process for determining whether to institute AIA proceedings. Initially, the Director of the USPTO, in consultation with at least three Patent Trial and Appeal Board (PTAB) judges, will assess whether discretionary denial of institution is appropriate. This step focuses on factors such as prior adjudications, changes in law, the strength of unpatentability challenges, and economic or public health interests.
If discretionary denial is deemed inappropriate, the case will be referred to a three-member PTAB panel. This panel will then decide on institution based on the merits of the case and other non-discretionary statutory considerations. This two-step process aims to clearly separate discretionary and non-discretionary factors, allowing for a more focused review of the case's merits by the PTAB panel.
Additionally, the USPTO has established guidelines for parties to submit briefs within defined timelines. The patent owner may file a brief explaining any bases for discretionary denial within two months of the PTAB entering a Notice of Filing Date Accorded to a petition. The petitioner may then file an opposition brief within one month after the patent owner's brief. Further briefing may be permitted for good cause, with word limits of 14,000 words for the initial discretionary denial briefing and 5,600 words for a reply brief. These guidelines promote efficiency and clarity in submissions, ensuring all relevant considerations are addressed.
Conclusion
The USPTO's interim process improvements represent a significant step forward in enhancing the efficiency and consistency of AIA proceedings. By introducing a bifurcated decision-making process and clear submission guidelines, the USPTO aims to reduce backlogs, improve PTAB efficiency, and promote more timely and consistent patent decisions. While these changes may require adjustments from practitioners and applicants alike, the long-term benefits of a more streamlined and predictable patent litigation process are likely to outweigh the short-term challenges. As the USPTO continues to refine its processes, it will be important for stakeholders to stay informed and adapt their strategies accordingly to navigate this evolving landscape.
Information source: https://www.uspto.gov/about-us/news-updates/uspto-rescinds-memorandum-addressing-discretionary-denial-procedures
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