In a recent regulatory shift, the U.S. Patent and Trademark Office (USPTO) has reinstated the Patent Trial and Appeal Board’s (PTAB) discretionary powers to decline inter partes review (IPR) petitions. This change represents a significant pivot from the 2022 guidance that curtailed such discretion, particularly under the Fintiv framework in accordance with Title 35, Section 314(a) of the U.S. Code. The PTAB’s renewed discretion introduces a degree of unpredictability in trial institution decisions but simultaneously offers new avenues for crafting petitions and articulating arguments regarding discretionary denials. Legal professionals must thus recalibrate their strategies to accommodate these developments, adapting both in petition preparation and in responding to denial arguments.
For additional insights on this regulatory adaptation, please refer to the original article on Law360.