In recent months, the U.S. Patent and Trademark Office (USPTO) has implemented significant changes to its discretionary denial procedures for inter partes review (IPR) and post-grant review (PGR) proceedings. These adjustments have introduced a bifurcated approach to institution decisions, aiming to enhance efficiency and consistency within the Patent Trial and Appeal Board (PTAB).
On February 28, 2025, the USPTO rescinded the June 21, 2022, memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” This memorandum had provided guidance on the PTAB’s discretion to deny institution of post-grant proceedings in light of parallel district court litigation. With its rescission, parties are now directed to rely on existing PTAB precedents, such as Apple Inc. v. Fintiv, Inc. and Sotera Wireless, Inc. v. Masimo Corp., for guidance on discretionary denials. ([uspto.gov](https://www.uspto.gov/about-us/news-updates/uspto-rescinds-memorandum-addressing-discretionary-denial-procedures?utm_source=openai))
Subsequently, on March 26, 2025, Acting USPTO Director Coke Morgan Stewart issued a memorandum introducing “Interim Processes for PTAB Workload Management.” This memorandum outlines a bifurcated process for evaluating IPR and PGR petitions. Initially, the Director, in consultation with at least three PTAB judges, assesses whether to exercise discretion to deny the petition. If discretionary denial is not deemed appropriate, the petition proceeds to a three-judge PTAB panel for a merits-based institution decision. ([wilmerhale.com](https://www.wilmerhale.com/en/insights/client-alerts/20250331-uspto-issues-memo-on-interim-process-for-ptab-discretionary-denial-evaluation?utm_source=openai))
Under this new framework, patent owners may submit a brief exclusively addressing discretionary denial issues within two months of the PTAB’s notice of filing date. Petitioners have one month to respond. This procedural change allows for a focused evaluation of discretionary factors before delving into the merits of the petition. ([ballardspahr.com](https://www.ballardspahr.com/insights/alerts-and-articles/2025/03/uspto-procedure-adds-new-hurdle-to-ptab-trial-institution?utm_source=openai))
These procedural changes have significant implications for both patent owners and petitioners. The bifurcated approach may lead to an increase in discretionary denials, as the Director now has a more prominent role in assessing such factors. This shift necessitates that parties carefully consider the timing and strategy of filing IPR and PGR petitions, especially in cases involving parallel litigation. ([geminilaw.com](https://geminilaw.com/2025/05/13/new-uspto-procedures-for-discretionary-denials-may-require-new-ipr-and-pgr-filing-strategies-for-hatch-waxman-and-bpcia-cases/?utm_source=openai))
In summary, the USPTO’s recent guidance reflects an effort to balance the PTAB’s workload while ensuring fair and efficient adjudication of post-grant proceedings. Stakeholders should stay informed about these developments and adjust their strategies accordingly to navigate the evolving landscape of post-grant practice.