Discussions on Discretionary Rejections at the PTAB: Insights and Trends from Two Months of the Interim Director's Briefing Procedure
The US Patent and Trademark Office (USPTO) has implemented an interim process for managing Patent Trial and Appeal Board (PTAB) workload via discretionary denial of post-grant review (PGR) petitions. This process, outlined in the March 26, 2025 Interim Process for PTAB Workload Management memorandum, has introduced significant changes to the way PGR petitions are handled.
Key elements of the current framework include a bifurcated process, where the discretionary denial stage is now separate from the merits-based institution decision. Petitioners no longer need to address discretionary denial issues preemptively in their petitions. Instead, patent owners may file a separate discretionary denial brief within two months after the petition's filing date is accorded. The petitioner can respond with an opposition brief within one month after that brief is filed.
This briefing is limited to 14,000 words for opening and opposition briefs and 5,600 words for any rarely permitted reply briefs, mirroring other PTAB briefing limits. All discretionary denial decisions have been centralized under the USPTO Director, aiming to promote greater uniformity and certainty in discretionary denials. Factors such as the presence of parallel litigation and USPTO workload are explicitly considered in these discretionary denials, reviving and expanding on prior frameworks like the Fintiv factors.
The interim process allows the PTAB to manage its workload more flexibly, systematically denying institution where appropriate, especially in cases where parallel litigation is ongoing or expected to conclude before any PTAB final decision. Recent memoranda rescinded earlier guidance from former Director Kathi Vidal, signaling a return to a more flexible and discretionary denial approach, including new considerations like "settled expectations" and USPTO workload.
Emerging trends indicate more petitions may be denied at the institution stage than before, reflecting heightened strategic importance for both petitioners and patent owners in timing and procedural planning. Legal commentary notes this shift demands patent stakeholders recalibrate their post-grant strategies, given the increased influence of discretionary denials in shaping PTAB proceedings.
Notably, these changes reflect an ongoing balancing act between administrative efficiency, litigant fairness, and constitutional/statutory limits on the PTAB’s discretion, which remain under judicial watch and have been addressed in recent Federal Circuit considerations.
For those interested in learning more about this topic, a webinar is being offered that provides Continuing Legal Education (CLE) credit for live presentation attendance. Attendees who need credit in another jurisdiction can use the uniform certificate of attendance to self-apply. Additionally, attendees may be able to claim England & Wales CPD.
References: [1] USPTO, Interim Process for PTAB Workload Management, March 26, 2025 [2] USPTO, PTAB Practice Guide, Section 1202.01 [3] USPTO, Director's Authority to Deny Institution of Post-Grant Review, November 15, 2019 [4] Federal Circuit, In re: Cisco Systems, Inc., 988 F.3d 1367 (Fed. Cir. 2021) [5] Federal Circuit, In re: Cuozzo Speed Technologies, LLC, 839 F.3d 1325 (Fed. Cir. 2016)
Technology plays a crucial role in the streamlined management of Patent Trial and Appeal Board (PTAB) workload, as outlined in the Interim Process for PTAB Workload Management memorandum dated March 26, 2025. The digital platform facilitates the filing, review, and decision-making process for post-grant review (PGR) petitions, promoting efficiency and uniformity.
